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 .
The Applicant’s amendment filed on May 22, 2025 was received. Claims 5,28 were amended. Claims 1-4,7-11,15-27,29 12 were canceled.
Claim Rejections - 35 USC § 112
The claims rejections under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention on claims 5,6,8,12,13,22,25,26,28,30 were withdrawn because claims 5 was amended and claims 8,22 were canceled.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as being anticipated by Yoshitoshi (JP 2010257739A) on claims 5,8,26,28 are withdrawn because the independent claim 5 has been amended.
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 over Nakamura in view of Fukuda and Di Noto on claims 1,2,14-16,23,29 are withdrawn because independent claim 1 has been canceled.
The claim rejections under 35 U.S.C. 103 over Nakamura in view of Morioka and Yoshitoshi on claims 5,6,8,12,25-28,30 are withdrawn because independent claim 5 has been amended.
Claims 5,6,12-14,28 are rejected under 35 U.S.C 103 as being unpatentable over Yoshitoshi (JP 2010257739A) in view of Alvarez Galego et al. (US 20130101906).
Regarding claims 5,14,28, Yoshitoshi discloses a method of producing a membrane-electrode assembly (abstract), comprising the steps of:
(a) providing a dispersion of an ion-exchange polymer in a protic polar solvent or in a solution comprising more than one protic polar solvent (§20, polymer electrolyte solution applied to electrode catalyst layer on electrolyte membrane);
(b) applying said dispersion on an ion-exchange membrane or on at least one electrocatalytic layer applied on said membrane by means of
(i) direct application on said membrane or on said at least one electrocatalytic layer (§20-21, polymer electrolyte solution in solvent applied to electrode precursor layer 22), or
(ii) application on an inert substrate followed by transfer on said membrane or on said at least one electrocatalytic layer, to form a membrane-polymeric layer system or an electrocatalytic layer-polymeric layer system;
(c) removing the solvent (§20, solvent may be removed);
(d) optionally, subjecting said membrane-polymeric layer system or said electrocatalytic layer-polymeric layer system to pressing and/or treatment with at least one acid or basic aqueous solution;
characterized in that the method further comprises the step of introducing at least one pore-forming agent into the electrocatalytic layer (§7, §13-14, pore former added to the mixture that is mixed, kneaded, and pulverized in the catalyst layer forming method) and the subsequent step of removing said at least one pore-forming agent from the electrocatalytic layer (§15, pore forming agent is removed);
wherein said electrocatalyst particles have an average particle size of 5-13 microns which substantially overlaps and anticipates the claimed range of an average diameter comprised between 0.01 and 10 micrometers with sufficient specificity,
said particles being obtained by means of a grinding step of initial electrocatalysts in the presence of at least one grinding agent (§12-14, the mixture comprising a pore former such as calcium carbonate is pulverized, wherein here the calcium carbonate being present within the mixture necessarily functions as a “grinding agent”)
and a subsequent step of removing said at least one grinding agent from said particles (as discussed above, the pore former, such as calcium carbonate, is removed);
and wherein the at least one grinding agent and the at least one pore-forming agent are the same material, i.e., calcium carbonate. However, Yoshitoshi does not explicitly the at least one grinding agent and the at least one pore-forming agent are the same oxide selected from one or more of ZnO, TiO2, and SiO2.
Alvarez Gallego et al. teach a method of producing a membrane electrode assembly comprising the use of a pore-forming agent, such as ZnO or CaCO3. See para. 30,85. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute ZnO for the calcium carbonate in the method of making a membrane electrode assembly of Yoshitoshi because ZnO and calcium carbonate are considered functionally equivalent pore-former (or grinding agent) as disclosed by Alvarez Gallego et al.
Regarding claim 6, the disclosure of Yoshitoshi differs from Applicant’s claims in that Yoshitoshi does not disclose the average diameter of the forming agent is between 200 and 20 nm. Nevertheless, Yoshitoshi recognize the important of particle size distribution and its sharp distribution is desirable. See §12-14. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to optimize the particle size of the pore forming agent to yield the electrocatalytic layer with optimum properties. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Also, it would have been obvious to one having ordinary skill in the art to have determined the optimum particle size of the pore forming agents through routine experimentation in the absence of showing of criticality. The Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst. See MPEP 2144.04.
Regarding claim 12, the disclosure of Yoshitoshi differs from Applicant’s claims in that Yoshitoshi does not disclose ratio between the pore former and the electrocatalyst materials in the process. However, it would have been obvious to one having ordinary skill in the art to have determined the optimum volume ratio between the pore forming agent and the electrocatalyst particles to achieve desirable properties of the membrane electrode assembly through routine experimentation in the absence of showing of criticality. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. In addition, it is the position of the examiner that disclosure provides no evidence of criticality with regard to the relative amounts of the pore forming agent and the electrocatalytic particles in the MEA.
Regarding claim 13, Yoshitoshi discloses a method of producing a membrane-electrode assembly I which the pore forming agent is removed by washing nitric acid followed by further washing with water and drying. See §12-14.
Claim 30 is rejected under 35 U.S.C 103 as being unpatentable over Yoshitoshi (JP 2010257739A) in view of Alvarez Galego et al. (US 20130101906) as applied to claims 5,6,12-14,28 above, and further in view of Nakamura (US 20050112448).
Regarding claim 30, the combination of Yoshitoshi and Alvarez Galego et al. teaches the method of producing a membrane electrode assembly as described above in Paragraph 6. However, Yoshitoshi and Alvarez Galego et al. do not disclose the particle size of the electrocatalyst particles. Nakamura et al. teach methods of making a membrane electrode assembly in which the particle size of the catalysts is between 0.1 nm to 100 nm (0.0001 micrometer 0.1 micrometer). See para 79. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use electrocatalyst particles of the size between 0.1 nm to 100 nm in the MEA of Yoshitoshi and Alvarez Galego because Nakamura et al. teach the fine catalyst particles can electrically connect the carbon particles supporting the catalyst with the solid polymer electrolyte member in a fuel cell system. See para 28.
Response to Arguments
Applicant's arguments filed 5/22/25 have been fully considered but they are not persuasive. Applicant’s principal arguments are Yoshitoshi does not teach the use of metal oxides for pore forming and/or grinding agents.
In response to Applicant’s arguments:
Applicant’s arguments are moot because they do not refer to the newly cited Alvarez Gallego et al. in which ZnO and calcium carbonate are considered functionally equivalent pore-formers (or grinding agents). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute ZnO for the calcium carbonate as taught by Yoshitoshi in the method of making a membrane electrode assembly.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAH-WEI YUAN whose telephone number is (571)272-1295. The examiner can normally be reached M-F 9am-5pm.
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) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717