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 .
DETAILED ACTION
Response to Amendment
This is the initial Office action based on the 18575980 application filed 01/02/24
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file
The Amendment filed 01/02/24 has been entered and fully considered
Claim(s) 1,2,3,4 are pending, of which claim(s) 2,3 were amended; The amendments of claim(s) 2,3 are supported by the originally filed disclosure; The new claim(s) 4 is supported by the originally filed disclosure
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.
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) 1 is/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 "Novel Sulfonated Polyimides as Polyelectrolytes for Fuel Cell Application. 2.Synthesis and Proton Conductivity of Polyimides from 9,9-Bis(4-aminophenyl)fluorene-2,7-disulfonic Acid" (herein known as XIAOXIA).
With regard to claim 1, XIAOXIA sufficiently teaches a membrane capable of gas separation comprising a sulfonated polyimide represented by the following general formula (1), see scheme 1, especially at scheme 1, pg 6708 col 2;
wherein Ar is an aryl group, X is 0.5, and M⁺ is H⁺ (after proton exchange), especially at scheme 1, pg 6708 col 2
Thus, the claimed property of ‘the membrane is gas separation,’ is taken to be necessarily present in the membrane of XIAOXIA, since products of identical or substantially identical chemical structure or composition cannot have mutually exclusive properties. (See MPEP 2112.01 Parts I-II)
MPEP 2112.01 Part I states…
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
MPEP 2112.01 PART II states…
“Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
In the alternative, assuming that it was determined that XIAOXIA does not sufficiently teach gas separation,
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide the membrane of XIAOXIA, such that it had the property of the membrane is gas separation, since where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established
Claim(s) 2, 3, 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Novel Sulfonated Polyimides as Polyelectrolytes for Fuel Cell Application. 2.Synthesis and Proton Conductivity of Polyimides from 9,9-Bis(4-aminophenyl)fluorene-2,7-disulfonic Acid" (herein known as XIAOXIA) in view of "Synthesis, water stability and proton conductivity of novel sulfonated polyimides from 4,4'-bis(4-aminophenoxy)biphenyl-3,3'-disulfonic acid" (herein known as WATARI)
With regard to claim 2, XIAOXIA does not specifically teach wherein the aryl group is one or more aryl groups represented by the following chemical formulas (2) to (7)
But, WATARI sufficiently teaches the TFMB structure, especially at "Synthesis of NTDA-BAPBDS polyimide and BAPBDS-based copolyimides" and aryls of ODA and TFMB, especially at sections 2.3, 2.4, fig 1
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide the aryl group of XIAOXIA with the TFMB structure of WATARI because these two structures/materials were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found obvious to substitute the ODA for TFMB, as tuaght by WATARI, especially at sections 2.3, 2.4, fig 1 (MPEP 2144.06)
With regard to claim(s) 3,4, XIAOXIA does not specifically teach wherein the metal cation is a mono- to tri-valent metal cation.
But, WATARI sufficiently teaches "Synthesis of NTDA-BAPBDS polyimide and BAPBDS-based copolyimides" and "ionic-exchange capacity (IEC) was measured by means of a classical titration method. A membrane sample of about 100 mg was soaked in 50 ml of a saturated NaCl solution for 2 days. Released protons were titrated using a 0.01N NaOH solution." (metal cation is a mono-valent metal cation), especially at sections 2.3, 2.4
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention (or at the time the invention was made; if pre-AIA ) to provide the polyimide XIAOXIA with "ionic-exchange capacity (IEC) was measured by means of a classical titration method. A membrane sample of about 100 mg was soaked in 50 ml of a saturated NaCl solution for 2 days. Released protons were titrated using a 0.01N NaOH solution." (metal cation is a mono-valent metal cation) of WATARI for the benefit of measuring ionic-exchange capacity, as taught by WATARI, especially at sections 2.3-2.4
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY R SHUMATE whose telephone number is (571)270-5546. The examiner can normally be reached on M,T,Th,F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached on (571)272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY SHUMATE/
Primary Examiner, Art Unit 1776