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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/16/2026 has been entered.
Response to Amendments
In response to the amendments received 07/16/2026:
Claims 1,4 and 6-9 are pending in the current application. Claim 1 has been amended.
Claim Interpretation
Independent claim 1 recites “…the body of the framework including a third component in an amount of 10% by mass or less but greater than 0%, the third component being at least one selected from the group consisting of silicon, magnesium, carbon, tin, aluminum, sodium, iron, tungsten, titanium, phosphorus, boron, silver, gold, chromium, and molybdenum…”. The disclosure teaches “The body of the framework can include a third component as a constituent element insofar as it does not affect a function and effect that the presently disclosed porous body has. The body of the framework may include as the third component for example silicon, magnesium, carbon, tin, aluminum, sodium, iron, tungsten, titanium, phosphorus, boron, silver, gold, chromium, and molybdenum. These components may be included, for example, as unavoidable impurities that are unavoidably introduced in a manufacturing method described hereinafter” (P98 of PGPUB US20220320530A1). Therefore, in light of the teachings that recited third component is due to unavoidable impurities unavoidably introduced that do not affect the function or effect of the porous body, this limitation will be met by a porous collector that does not include the third components in an amount above the recited limitation.
Independent claim 1 recites that the porous body being increased in volume by 1% or more for a shape of an external appearance thereof after the porous body undergoes a heat treatment in the atmosphere at 800°C for 200 hours with a load of 16 kPa applied.
Examiner notes this functional limitation does not give a clear-cut indication of the boundaries covered by the limitation and only recites a result obtained during a particular test/heat treatment with a given weight. A claim term is functional when it recites a feature “by what it does rather than by what it is” (e.g., as evidenced by its specific structure or specific ingredients). In reSwinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. It is the properties and utilities that provide real world motivation for a person of ordinary skill to make species structurally similar to those in the prior art. The prior art need not disclose a newly discovered property in order for there to be a prima facie case of obviousness. MPEP 2144.08
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. MPEP § 2112.01, I.
Independent claim 1 recites “…wherein when the body of the framework is observed in cross section at a magnification of 3,000 times to obtain an observed image, the observed image presents in any area 10 m square thereof five or less voids each having a longer diameter of 1 µm or more.” The instant disclosure teaches this as a method of measuring pore diameter and porosity and that a porosity between 40% and 98% with an average pore size between 60 µm and 3,500 µm fall within the claimed range (porosity for number of voids and pore diameter for void diameter) (P37-41 of instant disclosure).
Independent claim 1 recites “…the body of the framework further includes oxygen as a constituent element, and wherein the oxygen is included in the body of the framework in an amount of 0.1% by mass or more and 35% by mass or less”. The disclosure teaches that “…when the porous body is used as a current collector for an air electrode or a hydrogen electrode of an SOFC or the like and thus exposed to a high temperature of 700° C. or higher, and a spinel-type oxide composed of nickel and/or cobalt and oxygen is generated in the framework body, the body of the framework tends to include oxygen as a constituent element in an amount of 0.1% by mass or more and 35% by mass or less” (P95 of PGPUB). Therefore, when a spinel oxide composed of nickel and/or cobalt and oxygen is generated in the framework body, the limitation of oxygen as a constituent element in an amount of 0.1% by mass or more and 35% by mass or less will be met.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1-2, 4, 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2017/0005345) in view of Okuno et al (US 2017/0117557), Yamada et al. (US 2008/0107926), and evidenced by Larsen et al. (US 20110198216).
Regarding claim 1, Lee teaches a porous body comprising a framework having a three- dimensional network structure (P13),
the framework having a body including nickel and cobalt as constituent elements (P13),
the body of the framework including the cobalt at a proportion in mass of 0.2 or more and 0.8 or less relative to a total mass of the nickel and the cobalt, or Co: Ni of 1.5 to 2.0:1.5 to 1.0 (P45). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05- I
Lee teaches the framework maximizing a contact area by enhancing a height deference and foam shape as a three-dimensional porous network (P38-39.49-50) and reducing surface roughness of a cathode (P37.73). Arithmetic mean roughness, or surface roughness is reduced to improve current collecting abilities, maintain superior contact between layers, and improve conductivity. The framework is used within a fuel cell (P2-4.13-14).
Modified Lee does not explicitly disclose a property that when the body of the framework is observed in cross section with an electron microscope at a magnification of 3,000 times to obtain an observed image, the observed image presents in any area 10 µm square thereof, five or less voids, each having a longer diameter of 1 µm or more.
However, modified Lee does disclose that the porous metal foam formed of the mixed metals (cobalt and nickel; P44), in addition to having excellent electrical conductivity at high temperatures, is very effective in reducing a height difference between channels of a separator having a three-dimensional network structure (P46). As such, it is preferred that the density of the metal foam is limited to 200 g/m2 to 1000 g/m2, because having a density of less than 200 g/m2 increases porosity, but has a problem in securing sufficient electrical conductivity as a cathode current collector due to the insufficient thickness (P48). Further, the metal foam having a density greater than 1000 g/m2 has a problem of an air flow not being smooth (P48). Therefore, the density of the metal foam is considered a results effective variable that can be optimized by routine experimentation, to increase porosity, while maintaining smooth air flow.
“[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.” The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. (MPEP § 2144.05, II.).
Furthermore, Okuno, in a similar field of endeavor, teaches a porous member for a fuel cell. Okuno teaches a porous member should have a porosity of 60-85% and a pore diameter of at least 150 µm to ensure it forms a gas flow path (P43-48). (The instant disclosure (P37-41) teaches the porosity between 40% and 98% with an average pore size between 60 µm and 3,500 µm meet the above limitation). 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
Therefore, prior to the effective filing date of the claimed invention, it also would have been obvious to a person of ordinary skill in the art, to find a porosity and pore size of the porous body of Lee that allows smooth gas flow and connection, and arrive at five or less voids, each having a longer diameter of 1 µm, or 150 µm or more when the body of the framework is observed in cross section with an electron microscope at a magnification of 3,000 times to obtain an observed image in any area 10 µm square, as taught by Okuno.
Modified Lee is silent in explicitly teaching the reduced roughness value of the framework, or framework having a surface with an arithmetic mean roughness of 0.05 µm or more and 10 µm of less; however, the porous body of modified Lee is directed to minimizing the arithmetic mean roughness of the surface of the porous body to improve conductivity and reduce contact resistance (P4.9.73).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to minimize the arithmetic mean roughness of the surface of the porous body of Lee, such that the arithmetic mean roughness is 0.05 µm or more and 10 µm of less, in order to improve conductivity and reduce resistance.
“[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.” MPEP 2144.05
Furthermore, Yamada, like Lee, is also directed to the surface roughness of a porous body in a fuel cell (P39).
Yamada teaches that it is a well-known fact that if the contact surface pressure is less than a certain value, the contact resistance becomes very high, and a high degree of roughness decreases surface pressure negatively increasing resistance. Roughness is used as a result effective variable, and similar to Lee, the arithmetic mean roughness is decreased, to no greater than 10 µm, to minimize resistance (P39-41).
Therefore, it also would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to minimize the arithmetic mean roughness of the surface of the porous body of Lee, such that the arithmetic mean roughness is 10 µm of less, in order to improve conductivity and reduce resistance, as taught by Yamada.
The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art “[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.” “It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. MPEP 2144.05
The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations.. MPEP 2143 C
Furthermore, with respect to the above combination of overall element, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Modified Lee teaches the body of the framework further includes oxygen as a constituent element, or generating spinel structures at high temperatures to improve conductivity and reduce degradation (P37-39.40-49.73). In light of the instant disclosure (in claim interpretation) when a spinel oxide composed of nickel and/or cobalt and oxygen is generated in the framework body, the limitation of oxygen as a constituent element in an amount of 0.1% by mass or more and 35% by mass or less will be met (P95 of PGPUB US20220320530A1). Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention
Modified Lee is silent in teaching that the porous body being increased in volume by 1% or more for a shape of an external appearance thereof after the porous body undergoes a heat treatment in the atmosphere at 800°C for 200 hours with a load of 16 kPa applied.
However, in light of at least applicant arguments, when a spinel structure is generated and surface roughness is minimized to reduce resistance, the limitation is met (P24-26.52-53).
Therefore, it would have been obvious to one of ordinary skill in the art that the porous body of Lee would increase in volume by 1% or more for a shape of an external appearance thereof after the porous body undergoes a heat treatment in the atmosphere at 800°C for 200 hours with a load of 16 kPa applied, because it is an oxidized spinel generating three-dimensional porous structure used as a collector with optimized roughness.
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. MPEP § 2112.01, I
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.
Modified Lee is silent in teaching the body of the framework including a third component in an amount of 10% by mass or less but greater than 0%, the third component being at least one selected from the group consisting of silicon, magnesium, carbon, tin, aluminum, sodium, iron, tungsten, titanium, phosphorus, boron, silver, gold, chromium, and molybdenum and therefore, in light of the above claim interpretation, it would have been obvious to one of ordinary skill in the art to minimize impurities in the framework and arrive at a total amount of less than 10% by weight.
Furthermore, as evidenced by Larsen, related to porous body fuel cells, teaches that even “pure” starting materials comprise an unwanted incorporation of impurities that should be minimized including i.e., nickel oxide with a typical impurities such as magnesium and silicon in an amount of less than 1% by weight (P7; Table 1).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application that impurities will exist within the porous body comprising nickel and cobalt of modified Lee an amount between 0 and 10% by weight, as evidenced by Larsen. Recognition by a person of ordinary skill in the art before the critical date of a patent is not required to show anticipation by inherency. The use of extrinsic evidence is permissible to show that the missing descriptive material is necessarily present in the prior art reference description and that it would be so recognized by persons of ordinary skill.
Regarding claim 4, modified Lee teaches the body of the framework includes a spinel-type oxide (P37-39.49.73).
Regarding claim 6, modified Lee teaches wherein the framework is hollow, or the framework is porous and the polymer foam within the framework is removed (P54-56.63).
Regarding claim 7, modified Lee teaches the cobalt nickel foam exhibited an initial thickness of 0.75 mm falling within the claimed range of 0.2 mm and 2 mm wherein the body is sheet-shaped, or of a uniform thickness to maximize surface contact (P60-61.67.70; Fig. 1.5).
Regarding claim 8, modified Lee teaches a fuel cell comprising a current collector for an air electrode and a current collector for a hydrogen electrode, the current collector for the air electrode including the porous body according to claim 1 (P2.22-38).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Okuno and Yamada as applied to at least claim 1 above, and further in view of Okuno’18 et al. (US 2018/0030607).
Regarding claim 9, modified Lee teaches using the porous body according to claim 1 as the current collector for an air electrode in a SOFC (P13-14)
Modified Lee is silent in teaching this positive current collector can be used in a steam electrolysis apparatus; however, Okuno’18, in a similar field of endeavor, teaches a steam electrolysis apparatus that has the same structure as that of a SOFC and using any porous three-dimensional structure that can be plated, such as a nickel cobalt porous structure as the collector structure (P68-71.120-127).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the porous body according to claim 1 of modified Lee in a steam electrolysis apparatus as a current collector, because Okuno’18 teaches a similar structure used as a current collector in a fuel cell also used in a steam electrolysis apparatus. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. MPEP § 2143, B. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. MPEP § 2143B
Response to Arguments
In response to Applicant arguments filed 07/15/2026:
Applicant argues:
When the amount of the third component is 10% by mass or less, the volumetric expansion of the porous body of the present invention is ensured. In contrast, Lee does not include a third component. Rather, as Lee discloses in paragraph [0041], it is preferable to exclude chromium (Cr) and iron (Fe) components. In effect, Lee teaches away from containing a third component within the scope of the above-emphasized third component feature.
Examiner respectfully disagrees. The disclosure teaches “The body of the framework can include a third component as a constituent element insofar as it does not affect a function and effect that the presently disclosed porous body has. The body of the framework may include as the third component for example silicon, magnesium, carbon, tin, aluminum, sodium, iron, tungsten, titanium, phosphorus, boron, silver, gold, chromium, and molybdenum. These components may be included, for example, as unavoidable impurities that are unavoidably introduced in a manufacturing method described hereinafter” (P98 of PGPUB US20220320530A1). Therefore, in light of the teachings that recited third component is due to unavoidable impurities unavoidably introduced that do not affect the function or effect of the porous body, this limitation will be met by a porous collector that does not include the third components in an amount above the recited limitation.
Therefore, it appears that the third component is undesirable and should be minimized and whether it is present (in less than 10 wt%) or is not present does not effect the properties of the invention.
Applicant argues against the combination of Lee with Yamada and that the roughness taught by Yamada is not a roughness obtainable in the art.
Examiner notes response to arguments in previous rejection of record 03/25/2026.
Furthermore, the instant disclosure teaches when the porous body has the claimed arithmetic roughness the porous body can maintain satisfactory contact with a cell (because with this roughness it increases volume in the claimed way) (P47.151 of PGPUB). The disclosure teaches that as a metal is oxidized, expansion in volume for a shape of an external appearance is easily caused (P50) and to maintain satisfactory surface contact with a cell when oxidized, the roughness should be in the claimed range, suppressing increase in contact resistance (P29.34-39.47).
The instant disclosure is directed to suppressing contact resistance by maintaining satisfactory contact between a porous body and a fuel cell and teaches a suppression of increase in contact resistance is present and can be shown through feature Z (wherein the expansion seems to be drawn to a method of testing the collector) which is met when a spinel structure is generated (which equates to feature Y) where having the claimed arithmetic roughness can help oxidize the frame.
Yamada is considered analogous art because it is reasonably pertinent to the problem faced by the inventor. Yamada teaches it is a well-known fact that contact resistance is influenced by the surface roughness of the current collector, and that surface roughness is a result effective variable, known to affect results and properties. Irregularities on the surface of a collector lead to the true contact area being less than the apparent one and by decreasing the irregularities (roughness), higher surface contact can be achieved and thus contact resistance can be decreased (P40-41).
Therefore, while Lee and Yamada use different types of porous collectors, in light of Yamada teaching optimizing roughness is a well-known variable to reduce resistance improving conductivity, it would have been obvious to one of ordinary skill in the art to optimize the roughness and in doing so, improve conductivity reducing surface resistance, as neither a new or unexpected results. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. MPEP 2144.05
In summary, Examiner notes that the range of Yamada, or a roughness of 10 µm or less (and including examples of i.e. 0.08 µm (P39.49) overlaps the claimed range of 0.05 µm to 10 µm. The instant disclosure examples recite no specific roughness values, but merely whether the roughness falls inside or within the claimed range. "Only if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed range. The evidence must show that the unexpected results extend throughout the claimed subject matter but do not extend into the prior art teachings that fall outside of the claimed subject matter, i.e., that the claimed ranges are critical for obtaining the unexpected result. Mere lawyer's arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value.
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range and is reminded MPEP 716.02 discusses how criticality can be demonstrated. The examiner finds that Applicant has not shown criticality of the claimed range.
For the above reasons the examiner maintains a prima facie showing of obviousness by a preponderance of the evidence has been established.
Conclusion
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/Amanda Rosenbaum/ Examiner, Art Unit 1752
/Helen Oi K CONLEY/ Primary Examiner, Art Unit 1752
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