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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election of Group I, claims 1-18 in the reply filed on 07/09/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 9 and 17 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 9 and 17, the term “oxidation stabilizer” is unclear. The term is not defined in the instant application sufficiently such that a skilled artisan would now what is and isn’t considered to be an “oxidation stabilizer.” The instant specification does not provide an explicit definition of the term other than that the dispersion liquid “may contain a small amount of water-soluble substances such as an oxidation stabilizer” (see [0087]). This does not eliminate the lack of clarity because if an oxidant was dissolved in the water, it is not clear if it would be considered an “oxidation stabilizer”. The further mentions of this term in at least [0026], [0034], [0087], [0126], [0136], and [0171] of the instant specification do not aid the understanding of the scope of this term. In the interest of compact prosecution, the term was interpreted such that an “oxidation stabilizer” in view of the prior art would include any water soluble substances.
Claim Rejections - 35 USC § 102
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 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.
Claims 11-13, 16, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moghaddam et al. (Energy 2018, 161, 699-709).
Regarding claim 11, Moghaddam teaches a process for recycling proton exchange membranes, such as Nafion, used in membrane electrode assemblies, where the proton exchange membrane functions as an ion exchange membrane (Abstract; Pg. 704, 3.2; Pg. 707, 3.7.3). Moghaddam teaches the method includes subjecting Nafion membranes to dissolution in a supercritical mixture of ethanol/water at 240 °C in a pressurized autoclave in order to dissolve the ionomer, prior to filtering the obtained solution with a filter paper (Pg. 700, 2.2.1). Moghaddam teaches the ionomer is recovered from the solution (i.e. is separated) (Pg. 700, 2.2.1).
Regarding claim 12, Moghaddam anticipates the method of claim 11 and Moghaddam further teaches the ion exchange membrane that is recycled is a used ion exchange membrane that had performed ion exchange (Fig. 3-4; Pg. 705, 3.1, 3.2; Pg. 707, 3.7.3; Pg. 708, 4.).
Regarding claim 13, Moghaddam anticipates the method of claim 11 and 12 and Moghaddam teaches the membranes are used in fuel cells (Title; Pg. 699-700, Introduction; Pg. 708, Conclusion).
Regarding claim 16, Moghaddam anticipates the method of claim 11 and Moghaddam teaches the ionomer is fluorine based Nafion (Pg. 700, left col.).
Regarding claim 18, Moghaddam anticipates the method of claim 11 and Moghaddam teaches prior to treating the ionomer with the supercritical dispersion liquid, the ion exchange membrane to be recycled is treated with sulfuric acid (Pg. 700, 2.2.1.)
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 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.
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.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Koehler et al. (US20080064771A1; cited in the IDS dated 12/20/2023) in view of Lee et al. (KR101764068B1 English; cited in IDS dated 12/202/2023).
Regarding claim 1, Koehler teaches a process for recycling fuel cell components that includes treatment of a comminuted fuel cell with a supercritical medium, separating the supercritical medium into a precious metal-containing residue and a fluorine-containing solution, and further concentrating and separating the precious metals after separating the fluorine-containing constituent (Figure 1; [0006]; [0011]; [0026]; Claim 1-4, 6, 10-11). Koehler teaches the fluorine-containing constituents include ionomers ([0023]). The process of Koehler is
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[AltContent: textbox (Figure 1. Reproduced Figure 1 from Koehler.)]outlined in Figure 1, reproduced below:
The claim further requires the supercritical solvent is “a mixed solvent of alcohol and water” to which Koehler does not teach an alcohol is present.
Lee teaches a method of preparing a polymer electrolyte membrane that includes producing an ionomer dispersion with a supercritical medium containing water and an alcohol (Abstract; Claim 1).
Advantageously, if the water content is too high the mixture is not easily dispersed and if the content of alcohol is too large, the economic efficiency is deteriorated, therefore the mixed solvent produces a dispersions where nanoparticles remain in the whole dispersion (Pg. 3, par. 13-15).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a supercritical medium containing water and an alcohol in the process of Koehler in order to produce a dispersion that keeps the nanoparticles in the dispersion, as taught by Lee.
Regarding claim 2, Koehler in view of Lee teach the method of claim 1 and Koehler further teaches the method is for recycling fuel cell components, including membrane-electrode units ([0001]-[0004]; [0010]-[0011]).
Regarding claim 3, Koehler in view of Lee teach the method of claims 1 and 2 and Koehler further teaches the method is for recycling fuel cell components ([0001]-[0004]; [0010]-[0011]).
Regarding claim 5, Koehler in view of Lee teach the method of claim 1 and Koehler further teaches the temperature for supercritical medium ranges from about 350 to 450 °C at a pressure of about 20 to 40 MPa (200 to 400 bar) ([0038]; Claim 8). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Koehler (about 350 to 450 °C) overlaps with the claimed range (temperature from 100 to 350 °C). Therefore, the range in Koehler renders obvious the claimed range.
The claim further requires the pressure ranges from 1 to 17.0 MPa, to which Koehler teaches a pressure range of 20 to 40 MPa ([0038]).
Lee teaches a method of preparing a polymer electrolyte membrane that includes providing a continuous phase containing water and alcohol at a supercritical pressure from 20 to 2000 psig (0.14 to 13.8 MPa) (Claims; Pg. 3, par. 16-19). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Lee (20 to 2000 psig (0.14 to 13.8 MPa)) overlaps with the claimed range (1 to 17.0 MPa). Therefore, the range in Lee renders obvious the claimed range.
Advantageously, maintaining the pressure taught by Lee provides an appropriate particle size and distribution of desired ionomer particles (Pg. 3, par. 16-19; Pg. 4, par. 1).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use a supercritical medium pressure from 20 to 2000 psig (0.14 to 13.8 MPa) in the process of Koehler in order to produce an appropriate particle size and distribution of desired ionomer particles, as taught by Lee.
Regarding claim 6, Koehler in view of Lee teach the method of claim 1. Koehler further teaches the components that can be recycled by the method include PEM fuel cell stacks, DMFC fuel cells, catalyst-coated membranes, electrodes, or membrane-electrode units, where the membrane-electrode units comprises a ionomer membrane, gas-diffusion layers on the sides of the membrane, and electrode layers situated on either side of the membrane that act as catalysts for oxidation and reduction ([0004]-[0011]). Koehler teaches the ionomer can include fluorinated and perfluorinated constituents ([0039]). Koehler teaching a membrane-electrode unit that comprises an ionomer taught by Koehler meets the limitation of “an electrode binder”, because at least [0140] in the instant specification describes an ionomer dispersion as “an electrode binder”. Koehler further teaches the membrane conducts ions ([0004]; [0006]-[0008]).
Regarding claim 7, Koehler in view of Lee teach the method of claim 1. Koehler teaches the ionomer can include fluorinated and perfluorinated constituents ([0039]).
Regarding claim 8, Koehler in view of Lee teach the method of claim 1. Koehler further teaches the catalyst is a metal catalyst and/or a supported metal catalyst ([0007]).
Regarding claim 9, Koehler in view of Lee teach the method of claim 1. Koehler further teaches the supercritical medium can dissolve polymers, ionomers, surfactants, as well as oil and other organic compounds ([0026]-[0028]). As noted above in the 112(b) section, providing a supercritical medium with water soluble components meets the limitation “an oxidation stabilizer” because an “oxidation stabilizer” appears to be defined as a dispersion liquid “containing a small amount of water-soluble substances” (see [0087]).
Regarding claim 10, Koehler in view of Lee teach the method of claim 1. Koehler further teaches an acid treatment step can be performed after or during the concentration and/or separation step of the precious metal ([0031]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Koehler et al. (US20080064771A1; cited in the IDS dated 12/20/2023) in view of Lee et al. (KR101764068B1 English; cited in IDS dated 12/202/2023) and further in view of Prasad (Thesis, 2019).
Regarding claim 4, Koehler in view of Lee teach the method of claims 1 and 2. The claim further requires “the defective membrane electrode assembly is the membrane electrode assembly that has been determined to be defective due to incomplete application of an electrode or folding of a polymer electrolyte membrane during a production process,” to which Koehler and Lee do not explicitly teach the recycled membrane electrode assembly is a “defective membrane” due to reasons required by the claim.
First, Examiner notes Koehler teaches recycling fuel cell components, in particular to obtain precious metals and/or fluorine-containing constituents from fuel cell components, for example from PEM fuel cell stacks, DMFC fuel cells, catalyst-coated membranes (CCMs), electrodes or membrane-electrode units (MEUs), in a more concentrated form ([0001]). Koehler teaches the fluorine-containing constituents can be derived from numerous sources ([0039]-[0040]). A skilled artisan, looking to recycle membrane electrodes, could readily select the spent or defective membranes, such as those defective due to incomplete application or due to folding during production, when performing the recycling process of Koehler.
In the case where Koehler does not render obvious the limitation, Prasad is relied on.
Prasad teaches common defects in membrane electrode assemblies occur during assembly, such as defective sites due to weakly bonded catalyst particles to the membrane (Pg. 1, 1.1; Pg. 97, 5.4.3.3.1.1.). Poor bonding is interpreted to be equivalent to “incomplete application of an electrode.”
Advantageously, a skilled artisan would be motivated to recycle defective membrane fuel cells because they are undesirable due to factors including limited durability, stability, shortened lifetimes, reduced performance or cell failure (Pg. V).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use defective membranes, such as those including bonding issues, in the process of Koehler in order to avoid using membranes that contain undesirable properties such as limited durability, stability, shortened lifetimes, reduced performance or cell failure, as taught by Prasad.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Moghaddam et al. (Energy 2018, 161, 699-709) in view of Prasad (Thesis, 2019).
Regarding claim 14, Moghaddam anticipates the method of claim 11 and 12. The claim further requires “the defective ion exchange membrane is a product that has been determined to be defective due to partial impregnation of the ionomer or failure to control film thickness or failure to control drying and heat treatment processes during a production process,” to which Moghaddam does not explicitly state the recycled ion exchange membrane is a “defective membrane” due to reasons required by the claim.
First, Examiner notes Moghaddam teaches recycling ion exchange membranes used in membrane electrode assemblies where the Nafion membranes are used prior to being recycled and can be obtained from used membranes (Pg. 699-700, Introduction). A skilled artisan, looking to recycle membrane electrodes, could readily select the spent or defective membranes, such as those defective due to partial impregnation of the ionomer or failure to control film thickness or failure to control drying and heat treatment processes during a production process, when performing the recycling process of Moghaddam.
In the case where Moghaddam does not render obvious the limitation, Prasad is relied on.
Prasad teaches common defects in membrane electrode assemblies occur during assembly, such as defective sites due to weakly bonded catalyst particles to the membrane or due to variations in thickness during the fabrication process that can lead to stress and cracks in the membrane (Pg. 1, 1.1; Pg. 97, 5.4.3.3.1.1.).
Advantageously, a skilled artisan would be motivated to recycle defective membrane fuel cells because they are undesirable due to factors including limited durability, stability, shortened lifetimes, reduced performance or cell failure (Pg. V).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use defective membranes, such as those including variations in thickness produced during the fabrication stage, in the process of Moghaddam in order to avoid using membranes that contain undesirable properties such as limited durability, stability, shortened lifetimes, reduced performance or cell failure, as taught by Prasad.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Moghaddam et al. (Energy 2018, 161, 699-709), with evidentiary support provided by Morozova et al. (Membranes, 2026, 16, 83).
Regarding claim 15, Moghaddam anticipates the method of claim 11 and Moghaddam teaches the supercritical dispersion is a water/alcohol mixture that is heated at 240 °C in an autoclave that is pressurized (Pg. 700, 2.2.1). Moghaddam does not explicitly state the pressure in the autoclave, however a skilled artisan would know autoclaves achieve pressures between 3 and 5 MPa, as evidenced by Morozova (see Pg. 5, Autoclave Parameters). Accordingly, the pressure within the autoclave of Moghaddam would be fully within the claimed range.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Moghaddam et al. (Energy 2018, 161, 699-709).
Regarding claim 17, Moghaddam anticipates the method of claim 11 and Moghaddam teaches the superficial dispersion comprises water and is suitable for dissolving used Nafion membranes while the process includes other chemicals (Pg. 700, left col., 2.2.1). Accordingly, as indicated in the 112(b), water soluble substances meet the limitation “oxidation stabilizer” and Moghaddam teaching dissolving chemicals in water would include a non-zero amount of “oxidation stabilizer,” meeting the limitation required by the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
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