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 8/11/25. Claims 18 and 22 have been amended.
Please note that since Applicant’s elected claim 19 over claims 20-21, claim 20-21 status identifier must be withdrawn. The next office action will be a Non-Responsive Office Action if the status identifier for claims 20-21 comprising “(Withdrawn)” has not been amended.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The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claim 22 has been withdrawn because the Applicant amended the claim.
Claim Rejections - 35 USC § 102
The rejection under 35 U.S.C. 102(a)(2) as being anticipated by Kawaszu et al, on claims 18, 19, 22-25 has been withdrawn because the Applicant amended the claims.
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) 18, 19, 22, 23 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ichiro et al (JP H06168728).
Regarding claim 18, the Ichiro et al. discloses a liquid/gas diffusion layer(13, 23) for a solid polymer electrolyte fuel cell comprising a solid substrate (considered solid in contrast to gel, fluids) through which a plurality of pores (porous) and a plurality of in-plane micro channels formed in a surface of the substrate (15), wherein each of the plurality of micro channels is arranged to provide in-plane transport between two or more of the plurality of pores. The pores and the plurality of microchannels are arranged to provide through-plane transport (since the peaks are also porous and in between microchannels, the pores and the porous peaks must also provide through-plane transport).
It is noted that the limitation “formed” is product-by-process claim limitation. “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 diffusion layer is the same as to that of the Applicant's, Applicant' s process is not given patentable weight in this claim.
Regarding claim 19, the Ichiro et al. reference discloses wherein one or more micro channel of the plurality of micro channels has a substantially constant width along one or both of a length of the one or more micro channel or a depth of the one or more micro channel (Fig. 2).
Regarding claim 22, the Ichiro et al. reference discloses wherein the plurality of micro channels are arranged in a common direction or in multiple different directions on the liquid/gas diffusion layer (Fig. 2).
Regarding claim 23, the Ichiro et al. reference discloses wherein the plurality of micro channels are formed across a portion of the surface of liquid/gas diffusion layer (fig. 2).
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 (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 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) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Ichiro et al (JP H06168728) in view of Kinkelaar et al. (WO2004/062020)/
Regarding claim 24, the Ichiro et al. reference discloses the claimed invention above and further incorporated herein. The Ichiro et al. reference discloses the diffusion layer to comprise a porous conductive carbon by is silent in disclosing a carbon composite. However, Kinkelaar et al. reference discloses diffusion layers for fuel cells comprising porous conductive carbon composites are known (P23-24) and to improve gas diffusion and conductivity effectively (P15). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate porous conductive carbon composites for diffusion layers disclosed by the Kinkelaar et al. reference for the porous conductive carbon diffusion layer disclosed by the Ichiro et al. reference for fuel cell performance.
Regarding claim 25, the Ichiro et al. reference in view of the Kinkelaar et al. reference or the modified Ichiro et al. reference further discloses an electrically conductive material composite coating (P53) on the diffusion layer to provide increase conductivity to the diffusion layer. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate an electrically conductive material composite coating on the diffusion layer for the porous conductive carbon diffusion layer disclosed by the Ichiro et al. reference for enhanced fuel cell performance.
Response to Arguments
Applicant’s arguments with respect to claim(s) 18, 19,22-25 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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.
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.
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.
/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752