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 .
The Applicant’s arguements on 11/24/25.
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/6/25 has been entered.
Drawings
The drawing objection has been withdrawn because the Applicant amended the claims
Claim Rejections - 35 USC § 112
The 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre- AIA ), second paragraph, as being indefinite, on claims 1-5, 7, 8, 10 are withdrawn.
Claims Analysis
It is noted that claim disclosure, “adhered” 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 the laminated structure is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Claim Rejections - 35 USC § 103
The 35 U.S.C. 103 as being unpatentable over by Shuichi et al. (JP2004-185905) in view Nobata, on claims 1-5, 7, 8, 10 are amended in view of the Applicant’s arguements.
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) 1-4, 7, 8, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Shuichi et al. (JP2004-185905) as evidence by Shimamune reference (JP08-283980).
Regarding claim 1, the Shuichi et al. reference discloses a gas diffusion member (32, Abstract) arranged between a separator (40, 50) and a catalyst layer (31; Abstract) of a fuel cell. The diffusion layer comprising a porous material layer (carbon paper); and a conductive material layer (carbon paste). The porous material layer is formed of a conductive porous material (carbon paper) and the conductive material layer is formed of a conductive material (carbon paste). The conductive material layer is arranged throughout (Fig. 3 and 4) and on a surface of the porous material layer (“applied on the surface of the carbon paper”). The Shuichi et al. dislcsoes the conductive material is made of PTFE and carbon powder to form a carbon paste. As evidence by the Shimamune et al. reference, PTFE is a binder resin. The Shuichi et al. reference further ddiscloses the diffusion layer are known to be laminated between the plate and the catalyst layer, specifically examples in which the catalyst layer and the diffusion layer were tightly formed via carbon paste by hot-pressing were disclsoed. The Shuichi et al. reference does not specify the other surface of the diffusion layer contacting the separator are connected via carbon paste, however, it would have been obvious to one of ordinary skill in the art that the other surface of the diffusion layer contacting the separator plates functions the same via hot pressing with the carbon paste that comprises binder PTFE (binder lamination). In addition, since the Shuichi et al. reference teaches that it is known to laminate the diffusion plates in between the catalyst layer and separator plate, it would indeed obvious and teaches the claimed invention. A patent claim can be proved obvious merely by showing that the combination of elements was obvious to try. When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product is not of innovation but of ordinary skill and common sense. KSR v. Teleflex
Regarding claim 2, the Shuichi et al. reference discloses wherein the porous material layer (22, 33) comprises a groove (41, 51) on the surface on the side of the separator (40, 50) as a gas flow path.
Regarding claim 3, the Shuichi reference discloses a microporous layer is provided on a surface of the pours material layer on a side of the catalyst layer (33; Fig. 5).
Regarding claim 4, the Shuichi et al. reference discloses the conductive material is formed of a PTFE resin in which conductive particles are dispersed (See Figures).
Regard claim 7, the Shuichi et al. reference discloses a gasket (60,70) arranged to surround the gas diffusion member is fixed to the separator.
Regarding claim 8, the Shuichi reference discloses a fuel cell, comprising a cathode-side separator; a cathode gas diffusion member, a catalyst membrane; an anode gas diffusion member; and an anode-side separator in this order; wherein: the catalyst membrane comprises a cathode catalyst layer, an electrolyte membrane and an anode catalyst layer in order from a side of the cathode gas diffusion member; and the cathode gas diffusion member and the anode gas diffusion member are each the gas diffusion member of claim 1 (Fig 1-5).
The limitation “catalyst-coated” appears to be a product-by-process 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 the catalyst membrane is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 10, the Shuichi reference discloses a cathode gasket arranged to surround the cathode gas diffusion member is fixed to the cathode-side separator; and an anode gasket arranged to surround the anode gas diffusion member is fixed to the anode-side separator (60, 70; Fig. 2).
Claim(s) 5 is/are rejected under 35 U.S.C. 103(a) as being unpatentable by JP2004-185905) as evidence by Shimamune reference (JP08-283980) in further view of Koyama et al. (US Publication 2005/0238932)
Regarding claim 5, the Shuichi in view of Nobata reference discloses the claimed invention above and further incorporated herein. The modified Shuichi reference is silent in disclosing wherein a thickness of the conductive material layer is 1 to 100 µm, however, the Koyama reference discloses carbon paste on carbon paper is conductive and is about 20 microns (P93, P97). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate about 20 micron for the carbon paste on carbon paper disclosed by the Koyama et al. reference for the carbon paste on carbon paper taught by the modified Shuichi reference to maintain conductivity.
Response to Arguments
Applicant's arguments filed 11/24/25 have been fully considered but they are not persuasive.
Regarding clamed rejected under 35 U.S.C 112, second paragraph, is withdrawn. Therefore, these arguments are moot.
The Applicnat’s argue, “
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This has been rectified. Please see the rejections above.
The Applicants argue, “
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However, In response to applicant's argument that the prior art is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
The Applicants argue, “
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However, these arguments have been considered but moot since the rejection is withdrawn.
Conclusion
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752