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 7/18/2025 have been acknowledged. Claims 1-20 are pending.
This second non-final is being sent to address claim 1 which essentially contains the limitation of the previous claim 9, in light of a newly discovered reference to Mistry et al.
Claim Objections
Claim 18 is objected to because “an ionomer material” in line 2 should be changed to “the ionomer material”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The instant claim requires that the sublayers of the graphene-based flakes form peripheral, front and rear surfaces bound by ionomer material. The specification does not identify such surfaces or describe the structure of these surfaces bound by the ionomer material. The instant claim thus constitutes new matter.
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.
Claim 15 is 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 claim requires that the sublayers of the graphene-based flakes form peripheral, front and rear surfaces bound by ionomer material. However, it is unclear which peripheral, front and rear surfaces are being referred to. For examination purposes, as long as the sublayers of the graphene-based flakes are bound by the ionomer material, the claim is met.
Claim Rejections - 35 USC § 102
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.
Claims 11, 13, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2021/059528 to Kim et al.
Regarding claim 11, Kim et al. teaches an electrochemical cell, e.g. fuel cell 10, comprising:
an anode catalyst layer 56 of anode 14;
a cathode catalyst layer 56 of cathode 16;
an electrolyte membrane layer 12 extending between the anode catalyst layer and the cathode catalyst layer; and
a graphene-based layer 52 or 54 disposed between the cathode catalyst layer and the electrolyte membrane layer and/or the anode catalyst layer and the electrolyte membrane layer (Figs. 1 and 2; [0021-26]).
Kim et al. further teaches that the graphene may be in the form of sheets, flakes, powders and/or combinations thereof ([0027]), which anticipates the claimed graphene-based flakes, given the short list. Kim et al. also teaches a single or few layer graphene films ([0028]), the latter of which anticipates the claimed sublayers of graphene-based flakes forming a stacked configuration of the sublayers of the graphene-based flakes where at least some of the graphene-based flakes of each sublayer are offset from at least some of the graphene-based flakes of the other sublayers, as not all of the graphene-based flakes in the films are perfectly aligned with each other. Finally, the graphene-based layer is configured to suppress crossover gases to enhance performance of the electrochemical cell (Figs. 1 and 2; [0021-27]).
Regarding claim 13, at least some of the graphene-based flakes of at least one of the sublayers overlap with each other in the layers of the graphene films ([0027]; [0028]).
Regarding claim 14, the graphene-based flakes in the graphene-based sublayers are substantially parallel to each other in the stacked configuration in the layers of the graphene films ([0027]; [0028]).
Claims 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2014/009721 to Frost et al. (cited by IDS 6/4/2025; English equivalent US 2015/0180073 used for citation).
Regarding claim 11, Frost et al. teaches an electrochemical cell such as a fuel cell ([0001]) comprising:
an anode catalyst layer;
a cathode catalyst layer;
a first ion-conducting layer (electrolyte membrane layer) extending between the anode catalyst layer and the cathode catalyst layer ([0002-0005]); and
a graphene-based barrier layer disposed on the first ion-conducting layer ([0012]), that is, between the cathode catalyst layer and the electrolyte membrane layer and/or the anode catalyst layer and the electrolyte membrane layer. The barrier layer comprises graphene-based platelets having a structure made up of a single or multiple layers of a graphene layer ([0017]) and the graphene-based platelets in the barrier layer may be arranged in an ordered manner, randomly or a mixture of ordered and random ([0018]). As not all of the graphene-based flakes are perfectly aligned with each other, the prior art anticipates the claimed graphene-based layer having sublayers of graphene-based flakes forming a stacked configuration of the sublayers of the graphene-based flakes where at least some of the graphene-based flakes of each sublayer are offset from at least some of the graphene-based flakes of the other sublayers. Finally, the graphene-based layer is configured to suppress crossover gasses to enhance performance of the electrochemical cell ([0009-12]; [0028]).
Regarding claim 12, the sublayers of the graphene-based flakes are bound by an ionomer material configured to maintain the stacked configuration of the sublayers of the graphene-based flakes as Frost et al. teaches that the barrier layer is formed from an ionomer dispersion comprising the graphene-based platelets ([0030]; [0049-51]).
Regarding claim 13, at least some of the graphene-based flakes of at least one of the sublayers overlap with each other, as the graphene-based platelets in the barrier layer may be arranged in an ordered manner, randomly or a mixture of ordered and random ([0018]).
Regarding claim 14, the graphene-based flakes in the graphene-based sublayers are substantially parallel to each other in the stacked configuration at least in the case that the graphene-based platelets are arranged in an ordered manner ([0012]; [0017]; [0018]).
Regarding claim 15, the sublayers of the graphene-based flakes form peripheral, front and rear surfaces bound by the ionomer material as Frost et al. teaches that the barrier layer is formed from an ionomer dispersion comprising the graphene-based platelets ([0030]; [0049-51]).
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 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0384540 to Mistry et al.
Regarding claim 1, Mistry et al. teaches an electrochemical cell such as a fuel cell ([0002]) comprising:
an anode catalyst layer containing an electrocatalyst such as platinum;
a cathode catalyst layer containing an electrocatalyst such as platinum ([0063-67]);
an ion-conducting polymer membrane or electrolyte membrane layer extending between the anode catalyst layer and the cathode catalyst layer ([0018]; [0046]; [0047]); and
a layer containing a recombination catalyst supported on graphene disposed on the ion-conducting polymer membrane, that is, between the cathode catalyst layer and the electrolyte membrane layer and/or the anode catalyst layer and the electrolyte membrane layer, the recombination catalyst being, for example, platinum (Fig. 1; [0018]; [0029-45]; [0049-51]).
Although Mistry et al. does not expressly teach that contents of the graphene-based layer are commingled with contents of the anode and/or cathode catalyst layers and the electrolyte membrane layer, the prior art layer containing the recombination catalyst supported on graphene reads on the claimed graphene-based layer because it comprises graphene in the recombination catalyst ([0042-45]), the same catalyst of the electrode ([0031]; [0032]; [0063-67]), and the same ion-conducting polymer of the electrolyte membrane (0048]) and is disposed on surfaces of the ion-conducting polymer membrane adjacent to the electrodes (Fig. 1; [0002-7]; [0049-51]). Finally, the graphene-based layer containing the recombination catalyst supported on graphene is configured to suppress crossover gases to enhance performance of the electrochemical cell ([0029]).
Regarding claims 8 and 9, Mistry et al. teaches that the graphene-based layer includes a graphene oxide material or a functionalized graphene-oxide material ([0043]).
Regarding claim 10, the layer containing the recombination catalyst supported on graphene reads on the claimed graphene-based layer mixed with the anode and/or cathode catalyst layers and the electrolyte membrane layer because it comprises the same catalyst of the electrode ([0031]; [0032]; [0063-67]) and the same ion-conducting polymer of the electrolyte membrane (0048]).
Allowable Subject Matter
Claims 2-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 16-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Mistry et al. does not expressly teach that the graphene-based layer includes sublayers of graphene-based flakes forming a stacked configuration of the sublayers of the graphene-based flakes per claim 2. Accordingly, dependent claims 3-5 also contain the allowable subject matter. Although Mistry et al. teaches that the graphene-based layer includes an ionomer material configured to bind the graphene-based material ([0048]; [0082]), it does not teach a weight ratio of the ionomer material to the graphene-based material is 1:10 to 10:1 in claim 6. Further, Mistry et al. teaches that each layer of the membrane can be 1 to 7 µm ([0053]), which is outside the range of claim 7.
Independent claim 16 requires, particularly, a weight ratio of the ionomer material to the graphene-based material is 0.5:1 to 5:1. The closest prior arts of record do not teach this limitation. In particular, Frost teaches that the ionomer in the barrier layer makes up at most 20% ([0016]), which is outside the claimed range.
Response to Arguments
Applicant’s arguments with respect to claim 1 and its dependent claims 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. A newly discovered reference to Mistry teaches layers that correspond to the claimed counterparts, where, in particular, a graphene-based layer containing a recombination catalyst supported on graphene comprises the same materials and is disposed between the electrolyte membrane and respective electrode as claimed.
Applicant's arguments regarding claim 11 on Pages 7-8 of the remarks have been fully considered but they are not persuasive. As Kim teaches a number of graphene films containing graphene flakes ([0027]; [0028]) and not all of the graphene-based flakes are perfectly aligned, at least some of the graphene-based flakes are offset with other graphene-based flakes, thus meeting the claim. Further, the amendments necessitated a new ground of rejection over Frost, which also teaches the claimed features.
Claim 16 contains the previously indicated allowable subject matter and has been indicated allowable.
Finally, the terminal disclaimer filed 7/18/2025 has been acknowledged.
Conclusion
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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/Heng M. Chan/Examiner, Art Unit 1725
/BASIA A RIDLEY/Supervisory Patent Examiner, Art Unit 1725