DETAILED ACTION
Status of Application
This action is responsive to national-stage application filed 12/14/2023. Following entry of the concurrently filed preliminary amendment, new claims 19-36 are currently pending and under examination herein.
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 . However, 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 a 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.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) accompanying the application papers is in compliance with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, and therefore the information referred to therein has been considered as to the merits. Initialed copies of the IDS are included with the mailing/transmittal of this Office action.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Objection – Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: lack of antecedent basis for the subject matters of claims 22-27, as follows:
Claim 22: subject matter of recited species of “basic polymer,” see lines 3-4;
Claim 23: subject matter of recited mixing ratio ranges, see lines 3-4;
Claim 24: subject matter of “further comprising a sulfonated polymer,” see lines 1-2;
Claim 25: subject matter of “doping the membrane … with phosphoric acid,” see line 2;
Claim 26: subject matter of recited doping level of the phosphoric acid, see lines 2-3;
Claim 27: subject matter of recited ranges for temperature and time period, see lines 3-4.
The specification also is objected to due to the following informalities: referring to paragraph [0020], “N-methylpyrolidone” should be corrected to –N-methylpyrrolidone--.
Appropriate correction of the specification is required.
Objection – Claim(s)
Claim 29 is objected to due to the following informalities: solvent names “N-methylpyrolidone … Dimethylecetamide” (see lines 2-3) should be corrected to –N-methylpyrrolidone-- and --Dimethylacetamide--, respectively. Appropriate correction is required.
Claim Rejections – 35 U.S.C. 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 32-36 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.
Regarding Claims 32-33 and 34, the limiting significance of recited temperature ranges (“from -30oC to 250oC,” “from 0oC to 250oC,” “from -70oC to 250oC”) is unclear, as the claims are directed to PEM fuel cells (claim 32), PEM electrolysers (claim 33) and a chemical synthesis reactor (claim 34), and it is not apparent whether the recited temperatures are intended to imply additional structural limitations beyond the positively recited devices, or are merely non-limiting statements of operational temperatures during an intended use of the respective devices. For purposes of substantive examination, the latter claim interpretation is being adopted herein; however, clarification at least by way of explanation is required.
Regarding Claims 35-36, the preamble recitations “in a primary battery or a secondary battery” and “in an electrodes of a primary battery or a secondary battery” renders the claims ambiguous, hence indefinite. It is unclear whether the respective claims are to be broadly read as drawn to a separator and a binder as such, with the corresponding preamble recitation merely reflecting a non-limiting statement of intended utility/application, or narrowly construed to the combination of a separator in a primary battery or a secondary battery, and of a binder in the electrodes of a primary battery or a secondary battery. For purposes of substantive examination, the former (broader) claim interpretation is being adopted herein; however, clarification at least by way of explanation is required.
Claim Rejections – 35 U.S.C. 102/103
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.
(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.
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.
Claims 19-20 and 31-34 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Herring et al (US 2019/0085108 A1) (‘Herring’).
Regarding Claims 19-20, Herring has already disclosed a phosphonated polymer, specifically a phenol phosphoric acid functionalized fluoroelastomer (PolyPPA) prepared according to a reaction sequence as depicted in FIG. 4 (reproduced below) and described in Example 1 ([0090]-[0091]).
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As apparent from the figure, the PolyPPA is a phosphonated polymer, comprising an aliphatic polymer backbone and a phosphonic acid group present on a side chain of the phosphonated polymer. Further, the PolyPPA is a phosphonated aliphatic fluoropolymer, the backbone of which comprises two monomers selected from vinylidene fluoride (VDF) and hexafluoropropylene (HFP), and was produced in the form of a brown film ([0091]), which is considered a species of “membrane” as claimed. As such, Herring is seen to fully disclose an embodiment of phosphonated polymer as per claims 19-20. The description in a reference of a single embodiment of broadly claimed subject matter constitutes a description of the invention for anticipation purposes. In re Luckach, 169 USPQ 795 (CCPA 1971).
Regarding Claim 31, Herring discloses the phosphonated polymer according to claim 19 as discussed above. Herring further notes that functionalization of perfluoroelastomers with acid groups opens up the possibility of them being used as polyelectrolytes in electrochemical cells ([0004]). As the PolyPPA described in Example 1 of Herring is a fluoroelastomer comprising perfluorinated units (HFP) and is phosphonic-acid functionalized, those of ordinary skill would have expected this functionalized fluoropolymer to possess similar utilitarian properties. Thus, based on a reasonable expectation of success, it would have been obvious to one of ordinary skill in the art at the time of effective filing to create an electrochemical cell comprising the PolyPPA of Herring, and thereby arrive at the present invention.
Regarding Claims 32-34, Herring discloses the phosphonated polymer according to claim 19 as discussed above. Herring further generically teaches to incorporate the functionalized fluoropolymer of that invention into a device; wherein the device can be, inter alia, a fuel cell, an electrolyzer, a membrane, or an electrochemical membrane reactor, and can be used for energy, conversion of chemical or sensing ([0085]). In light of this teaching, those of ordinary skill would have reasonably expected the PolyPPA of Herring to possess similar utility in the enumerated devices. Accordingly, given a reasonable expectation of success, it would have been obvious to one of ordinary skill in the art at the time of effective filing to incorporate the PolyPPA of Herring into a device as claimed; i.e., PEM fuel cells [for claim 32], PEM electrolyzers [for claim 33] or a chemical synthesis reactor [for claim 34], and thereby arrive at the claimed inventions. And although Herring is silent as to operating temperatures of the disclosed devices, the position is taken that the temperature ranges recited in claims 32-34 pertain to intended manners of using the claimed devices during intended operations, which are not germane to the patentability of the apparatus (device) itself. That is, Herring discloses the corresponding devices as discussed above, any difference resides in the operating temperatures at which the devices are to be used, and it has been held that the manner in which an apparatus is to be utilized is not germane to the issue of patentability of the apparatus itself. See, MPEP 2115 and In re Casey, 152 USPQ 235 (CCPA 1967).
Claims 19-20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Audenaert et al (US 2022/0372193 A1) (‘Audenaert’).
Regarding Claim 19, Audenaert has already disclosed a phosphonated polymer as a functionalized fluorinated polymer, see Example EX-4 in Table 1 ([0150]) and paragraph [0145]. The functionalized fluorinated polymer was prepared by reacting FFKM 1 with vinyl phosphonic acid (VPA), wherein the VPA comprises a phosphonic acid group and the FFKM 1 is a peroxide curable iodinated tetrafluoroethylene (TFE)/perfluoromethylvinylether (PMVE) raw gum, which Audenaert earlier describes as a fluorinated elastomer gum ([0061]). The phosphonic acid is present in a side chain of a fluorinated polymer backbone substantially free of -CH2-CH2- in accordance with formula I as described in paragraph [0005] of Audenaert. The product of EX-4 thus comprises a species of phosphonated polymer selected from phosphonated aliphatic fluoropolymer rubbers (pFKM), wherein the phosphonic acid group is present on a side chain of the phosphonated polymer, as claimed.
Regarding Claim 20, Audenaert discloses the phosphonated polymer according to claim 19 as discussed above, wherein the backbone of the phosphonated polymer comprises two monomers selected from tetrafluoroethylene (TFE) and PMVE as a species of perfluoroalkylvinyl ether (PAVE), as claimed. Further, although Audenaert is silent as claimed feature “wherein the phosphonated polymer can be shaped into a membrane,” it is considered implicit that the functionalized fluorinated polymer of Example EX-4 will intrinsically possess the same functional property in view of the identity of polymer composition and side-chain location of the phosphonic acid group. Where, as here, a reference discloses all the limitations of a claim except for a property or function, and examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention, basis exists for shifting the burden of proof to applicant. See, In re Fitzgerald et al, 205 USPQ 594, 596 (CCPA 1980) and MPEP §§ 2112-2112.02.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Fan et al (US 2004/0038107 A1) is cited as pertinent to PEM comprising sulfonated and phosphonated poly(styrene) material having a covalently bonded tertiary hydrogen replacement group (note Fig. 10). The citation does not teach the present invention.
Allowable Subject Matter
Claims 21-26 are objected to as being dependent on a rejected base claim, but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claim.
Claims 35-36 would be allowable if amended or rewritten to overcome the rejection under 35 U.S.C. 112 set forth in this Office action and to include all the limitations of the base claim and any intervening claim.
Claims 27-28 and 30 are allowed. Claim 29 is allowable in substance.
The closest prior art to Herring et al and Aundeart et al, discussed above, does not describe the inventions of instant claims 21-30 and 35-36, or provide proper rationale to modify either of their respective inventions into the invention of any one of said claims.
Correspondence
Any inquiry concerning this communication should be directed to Examiner F. M. Teskin whose telephone number is (571) 272-1116. The examiner can normally be reached on Monday through Friday from 9:00 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Jones, can be reached at (571) 270-7733. The appropriate fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/FRED M TESKIN/Primary Examiner, Art Unit 1762
/FMTeskin/06-08-26
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