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 .
Status of Application
Applicant’s amendments and remarks filed have been acknowledged. Claims 1-3 and 6-21 are pending.
Claim Objections
Claim 14 is objected to because “a metal substrate” in line 3 should be changed to “the metal substrate”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 6 and 7 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. The instant claims depend on a canceled claim. For examination purposes, the instant claims are considered to depend on claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6, 7, 10-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0231748 to Vincent et al. (cited by Applicant), in view of US 2012/0321872 to Nachoshon-Galili et al.
Regarding claim 1, Vincent et al. teaches a bipolar plate for a fuel cell, e.g. a polymer electrolyte fuel cell ([0001]), comprising a metal substrate with a coating on one or both surfaces of the substrate ([0029-32]; [0079-84]), the coating comprising an organic polymer or polyurethane ([0039]; [0040]), and an electroconductive filler ([0041]),
wherein the organic polymer is formed by chemical reaction of at least two components, comprising a polyisocyanate as first component and a polyol, which is a compound having at least two free hydroxy groups, as second component ([0040]).
Vincent et al. does not expressly teach that the second component is a prepolymer having at least two free hydroxy or amino groups, said prepolymer being selected from hydroxy- or amino-functional polyacrylates, polyesters, polyolefins, polyureas, alkyd resins and polyalkylsiloxanes.
Nachoshon-Galili et al. also relates to a two-component polyurethane dispersion, which may be useful for coating applications ([0041]), prepared from combining (a) an aqueous polymer emulsion comprising one or more emulsifiable polymers and one or more polyols and (b) one or more isocyanates (abstract) and teaches that the one or more polyols include, for example, one or more polyesters ([0022]; [0042-50]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a polyester polyol as the second component in the formation of the coating in Vincent et al., motivated by the fact that Nachshon-Galili et al. demonstrates that the polyester polyol is a known component that reacts with an isocyanate to form a polyurethane composition that is useful for applications such as coating, where the product exhibits high adhesive qualities to many substrates, high strength, resistance to extreme temperatures, resistance to large scale of chemicals, high elasticity, flexible enough to bridge cracks even at low temperature, enough strength to withstand physical pressure and stresses, high productivity, ability to cover a wide area in a short time, environmentally friendly, easy mixing, and easy application, among other advantages ([0011]; [0012]; [0072]). The skilled artisan would have obtained expected results applying or combining known elements to a similar composition or reaction and appreciated the advantageous qualities of the coating in the fuel cell environment. Finally, since the prior art bipolar plate meets the claim, it is considered suitable for a low-temperature fuel cell.
Regarding claims 2 and 3, Vincent et al. teaches that the first component is a polyisocyanate, advantageously a diisocyanate, for example, Bayer's Bayhydur® ([0040]), which is a diisocyanate based on hexamethylene diisocyanate. Nachoson-Galili et al. also teaches that the first component may be, for example, hexamethylene diisocyanate (HDI) ([0026]).
Regarding claims 6 and 7, Vincent et al. does not expressly teach that the claimed second component having the molar mass or one or more fluorinated compounds.
Nachshon-Galili et al. also relates to a two-component polyurethane dispersion, which may be useful for coating applications ([0041]), prepared from combining (a) an aqueous polymer emulsion comprising one or more emulsifiable polymers and one or more polyols and (b) one or more isocyanates (abstract) and teaches that the polyols may refer to "macroglycols," which include polymeric polyols having molecular weights of at least 500 Daltons (1 Dalton = 1 g/mol), for example, about 1,000-10,000 Daltons, such as 1,000-6,000 Daltons, for example, halogenated polyesters and polyethers ([0042]). The term “halogenated” encompasses “fluorinated”.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the claimed polyols in the invention of Vincent et al., motivated by the fact that Nachshon-Galili et al. demonstrates that polyols with the claimed molar mass and fluorinated compounds are known components for the polyurethane dispersion and the product is useful for coating applications and exhibits a number of advantages including high adhesive qualities to many substrates as well as high strength (abstract; [0012]; [0041]; [0042]; [0072]). The skilled artisan would have obtained expected results applying or combining known elements to a similar composition or reaction and appreciated the advantageous qualities of the coating in the fuel cell environment.
Regarding claim 10, Vincent et al. teaches that the electroconductive filler is advantageously carbon black ([0041]; [0042]; [0068]).
Regarding claim 11, Vincent et al. teaches that the coating has a thickness of 10 to 20 micrometers ([0038]).
Regarding claim 12, Vincent et al. teaches that the metal substrate has teeth and/or channels (Fig. 1; [0036]; [0119]), which read on the claimed embossed structure.
Regarding claim 13, Vincent et al. teaches that the metal substrate is formed from stainless steel ([0033]).
Regarding claim 14, Vincent et al. teaches a method for producing the bipolar plate in accordance with claim 1, comprising the steps of:
- providing the metal substrate or plate;
- applying the first, the second and optionally further components as well as the electroconductive filler to the surface of the substrate; and
- allowing the components to react to form the organic polymer at elevated temperature in order to form the coating, as the composition comprising the conductive material fillers, the polymer, and other components is coated on the plate ([0079-84]; [0106-108]), where the polymer may be obtained by polymerization directly in the composition or even in situ on the plate at an elevated temperature ([0087]) ([0087]).
Regarding claim 16, Vincent et al. teaches that the components are allowed to react with teach other at a temperature range from 130°C to 170°C ([0087-89]).
Regarding claim 17, Vincent et al. teaches that the components are applied in water and/or an alcohol ([0085]).
Regarding claim 18, Vincent et al. teaches that the components are sprayed, rolled or printed onto the substrate ([0111]; [0146]; [0147]).
Regarding claim 19, Vincent et al. teaches that the substrate is provided with an embossed structure, which includes teeth and/or channels, particularly for the distribution of gases (H2, O2, or air) and the discharge of water formed (Fig. 1; [0009]; [0036]; [0119]), but does not expressly teach that the embossed structure is provided after the coating is formed.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the embossed structure after the coating is formed in order to protect the embossed structure with the coating because the substrate has surfaces exposed to the gases and water and surfaces in contact with the electrode assembly (Fig. 1; [0008]; [0036]; [0037]; [0077]) and the coating protects the plate from corrosion, particularly caused by the presence of an oxidizer (oxygen) or of an acid medium (protons originating from the reaction at the anode), and degradation and absorbs possible release of metal ions that may harm the electrode assembly, enabling to maintain the cell performance and durability ([0028]; [0121]; [0122]).
Regarding claim 20, Vincent et al. teaches a bipolar plate unit is preferably two plates soldered together ([0119]). Although Vincent et al. does not expressly teach that the two plates are connected to each other by means of their uncoated surfaces, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the invention in a case that the two plates are soldered together before the coating is applied or in a case that the two plates are coated except the surfaces for connection because those surfaces do not need the protective coating.
Regarding claim 21, Vincent et al. teaches that the coating has a thickness in the range of 1 to 50 micrometers, or even from 10 to 20 micrometers.
Although Vincent et al. does not expressly teach the claimed range of 3-15 µm, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention because the taught ranges overlap with the claimed counterpart. A prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05[R-5].
Claims 8, 9, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Vincent et al. and Nachoshon-Galili et al. as applied to claims 1 and 14 abvoe, in view of US 2016/0200858 to Fukuda et al.
Regarding claim 8, Vincent et al. does not expressly teach that the organic polymer is additionally formed from a carbodiimide as a further component.
Fukuda et a. also relates to a coating composition for an object such as a metal or steel plate ([0001]; [0254]) and teaches that the coating composition comprises a blocked polyisocyanate from polyisocyanate monomers or polyisocyanate derivatives ([0019]; [0020]), where the polyisocyanate derivatives include carbodiimide-modified products (a carbodiimide-modified product produced by decarboxylation condensation reaction of the above-described polyisocyanate monomer, etc.) ([0027]). Fukuda et al. further teaches that the blocked polyisocyanate may be used with a polyol compound to make a polyurethane resin ([0216-218]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a carbodiimide as a further component in the polymer of Vincent et al., as Fukuda et al. demonstrates that carbodiimide-modified polyisocyanate is a known compound for producing a blocked isocyanate, which then can be used as a curing agent component for a polyurethane resin, the blocked isocyanate having excellent low temperature curing properties, having a relatively longer pot life even if it is dispersed in water ([0001-2]; [0033]; [0216-218]).
Regarding claim 9, Vincent et al. does not expressly teach that the organic polymer is additionally formed from a further component which serves as an adhesion promoter to the metal substrate.
Fukuda et a. also relates to a coating composition for an object such as a metal or steel plate ([0001]; [0019]; [0254]) and teaches that the coating composition comprising a blocked isocyanate and other components is also an adhesive composition (abstract; [0018]; [0216-218]; [0235-241]), which entails that there is at least one element that serves as an adhesion promoter.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived at the claimed invention because Fukuda et al. demonstrates that the polymer has adhesive property due to its composition ([0216-218]; [0235-241]). Furthermore, the skilled artisan would have appreciated that the coating composition adheres to the metal substrate well by selecting components that promote adhesiveness.
Regarding claim 15, Vincent et al. teaches that the first component is a polyisocyanate, advantageously a diisocyanate ([0040]), but does not expressly teach that the first component is applied in the form of a compound having blocked isocyanate groups to the substrate.
Fukuda et a. also relates to a coating composition for an object such as a metal or steel plate ([0001]; [0019]; [0254]) and teaches that the coating composition comprises a blocked isocyanate, which is often used as a curing agent for polyurethane resin ([0002]; [0216-218]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used blocked isocyanate as the first component in the method of Vincent et al., because Fukuda et al. teaches that the blocked isocyanate has a long pot life and excellent processability and is easily activated by heat for reaction with the polyol component to form the polyurethane resin ([0002]; [0216-218]).
Response to Arguments
Applicant’s arguments with respect to claim 1 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. Applicant amended claim 1 to require specific second component. In response, the Examiner has applied a combination of Vincent and Nachshon-Galili to demonstrate that known isocyanate compounds and known polyols combine to produce polyurethane coating composition, where the polyol includes polyesters (see rejection above). Applicant pointed out on page 6 of the remarks filed 7/18/2025 that Bayhydrol is a hydroxy-functional polycarbonate. The Examiner shared in an interview with Applicant’s representative on November 19th, 2025 that the tradename Bayhydrol included a variety of polymers other than polycarbonate.
Applicant argued about the combination of Vincent and Nachoshon-Galili on Page 7 of the remarks that the latter refers to polyurethane coating for completely different fields of application, in particular in the building and construction industries, such as coatings or paints for interior or exterior walls, roofs, water reservoirs and tanks as well as road markings ([0072]). The Examiner respectfully disagrees. The application of the composition of Nachoshon-Galili is limited to those pointed out by Applicant. Vincent teaches a bipolar plate comprising a polyurethane coating formed from a reaction of at least an isocyanate component and a polyol and Nachoshon-Galili demonstrates known isocyanates and known polyols to make a polyurethane coating composition. One of ordinary skill in the art would have used or combined known elements for a similar reaction/composition and obtained expected results. Furthermore, the skilled artisan would have appreciated the advantages of the coating composition including high adhesive qualities to many substrates, high strength, resistance to large scale of chemicals, among others, in the fuel cell environment (Nachoshon-Galili [0012]; [0072]).
Several attempts were made to place the claims in condition for allowance with examiner’s amendments, but Applicant’s representative did not respond timely.
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 HENG M CHAN whose telephone number is (571)270-5859. The examiner can normally be reached 9 am - 5:30 pm on Monday, 9 am - 3 pm on Tuesday, and 9 am to 1 pm on Wednesday and Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Basia Ridley can be reached at 571-272-1453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Heng M. Chan/Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725