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 .
Applicant’s amendments were received on 3/16/26. Claim 13-15, 19 has been amended. Claims 1 and 12 are cancelled. Claims 2-6, 11 are withdrawn, currently amended.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, on claim 19 has been withdrawn because the Applicant amended the claim.
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 13-15, 19 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. Specifically, the claim disclose a final product of an electrochemical reactor comprising a stack of separators and membrane/electrode assemblies defining superimposed electrochemical cells, however, the claims are also to an intermediate product “prior to being adhered,” is unclear if the Applicants are claiming an intermediate or the final product. Appropriate corrections are required.
Claims Analysis
It is noted that claims discloses “prior to being adhered to the separator plate, comprises a substrate and an adhesive layer applied to one of the two opposed surfaces of the substrate, to form said first face” and “said substrate of the adhesive film is provided on each of its two sides with an adhesive layer” are product-by-process claim limitations. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since electrochemical reactor is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
It is noted that claim limitation have “intended use” language such as “for sealing the membrane/electrode assembly with the separator,” “to adhere to the separator plate,” “configured to channel (113, 116) a fluid along a face of a membrane/electrode assembly applied against said distribution face” and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Claim Rejections - 35 USC § 102
The rejection under 35 U.S.C. 102(a)(2) as being anticipated by Shimizu et al., on claim 12 is withdrawn because the Applicant cancelled the claim.
The rejection under 35 U.S.C. 102(a)(2) as being anticipated by Shimizu et al., on claim 13-15, 19 is maintained. The rejection is further modified in view of the Applicant’s amendments.
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.
Claim(s) 13-15, 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shimizu et al. (JP2006092923).
Regarding claim 15, the Shimizu et al. reference disclose an electrochemical reactor separator comprising a stack of separators and membrane/electrode assemblies defining superimposed electrochemical cells (Fig. 1 and 2). The stack including one or more separators comprising a separator plate (12a or 12b) having a distribution face (surface of 14, 16 with manifolds 83, 103, 93, 10) configured to channel (113, 116) a fluid along a face of a membrane/electrode assembly applied against said distribution face (16, 14), and a sealing film (15b) adhered to the distribution face of the separator plate (As seen in Fig. 3). The sealing film being adhesive on a first face facing the separator plate (Cell 2, “the release layer 132 on the separator 12a side of the double-sided tape 15a is peeled off, and the exposed adhesive layer 131 is attached to a predetermined position of the separator 12a”) and being non-adhesive on a second face opposite the separator plate (when the release layer 133 is still on).
As indicated under Claims Analysis section, it is noted that claims discloses “prior to being adhered to the separator plate, comprises a substrate and an adhesive layer applied to one of the two opposed surfaces of the substrate, to form said first face” and “said substrate of the adhesive film is provided on each of its two sides with an adhesive layer” are product-by-process claim limitations. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Even if it these limitations were considered, the sealing film, prior to being adhered to the separator plate, comprises a substrate (release layer 133, 132) and an adhesive layer (131) are disclosed.
It is noted that claim limitation have “intended use” language such as “for sealing the membrane/electrode assembly with the separator,” “to adhere to the separator plate,” “configured to channel (113, 116) a fluid along a face of a membrane/electrode assembly applied against said distribution face” and it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 13, the Shimizu et al. reference discloses the separator comprising another separator plate (12b, 12a) assembled with the separator plate (14, 16) by means of an adhesive film (15a) interposed between the two separator plates (Fig. 2).
Regarding claim 14, the Shimizu et al. reference discloses that wherein the other separator plate has a distribution face on the side opposite the separator plate, the separator comprising a sealing film deposited on said distribution face of the other separator plate, this sealing film being adhesive on a first face thereof facing the other separator plate to adhere thereto and non-adhesive on a second face thereof opposite the other separator plate (“the release layer 132 on the separator 12a side of the double-sided tape 15a is peeled off, and the exposed adhesive layer 131 is attached to a predetermined position of the separator 12a”).
Regarding claim 19, the Shimizu et al. reference discloses a pair of separator (12a and 12b) plates each having a distribution face configured to channel a fluid along a face of a member electrode assembly applied against the distribution face. An adhesive film (15a), adhesive on both sides, interposed between the pair of separator plates (double sided tape at 15a).
Response to Arguments
Applicant's arguments filed 3/16/26 have been fully considered but they are not persuasive.
The Applicant’s argues that the prior art does not disclose or suggest that only one release layer would remain on the adhesive layer such that the counter part of the sealing film would have a non-adhesive face opposite to the separator plate.
However, the claim limitation does not disclose a final product of the invention. The claimed invention is for an intermediate product since the claims recite “prior to being adhered” and will be interpreted as such. Shimizu reference discloses the sealing film, prior to being adhered to the separator plate, comprises a substrate (release layer 133, 132) and an adhesive layer (131) are disclosed in manufacturing Cell 2. After the sealing film is adhered to the separator but prior to the release layer peel of the opposing side to be removed, the opposite side is non-adhesive which is an intermediate product of the claimed invention.
The Applicants argue, “The assembly instructions in Shimizu make clear that both release layers are removed during the joining process, so that the adhesive layers can bond to the respective components (separator, elastic member, MEA),” “Shimizu does not disclose or suggest a configuration in which a release layer remains on the adhesive layer to provide a non-adhesive face opposite the separator plate. The reference teaches removal of both release layers prior to assembly, resulting in adhesive bonding on both sides. Any interpretation to the contrary is not supported by the disclosure of Shimizu.”
However, the claim limitation is not for a final product as argued. The claims are for a separator intended to have an electrode assembly and channels fluids through the surface, but the actual components aren’t positively claimed.
As addressed in the advisory action and in Non-Final:
The Applicants arguments that the Shimizu does not teach the release layer should be left in place during assembly to create a non-adhesive face...the release layers are always described as being "peeled off".
However, that is not what the claim limitation requires. The claim requires the sealing film prior to being adhered to the separator plate.
Please note: By limiting another component on the side of the non-adhesive layer would perhaps further prosecute these claims since it defines the component touching the non-adhesive layer to be part of the final product. Please do not add new matter and any broad deviations from these instructions may not further prosecution.
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 HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached on 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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