DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Remarks
2. Applicant’s amendments submitted on 8/20/25 have been received. Claims 3, and 7-9 have been amended. Claims 1, 2, 4, 10, and 17 have been cancelled.
Claim Rejections - 35 USC § 103
3. 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.
4. 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.
5. Claim(s) 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morioka (JP2017103142A) with citations from machine translation provided with this Office Action.
Regarding claim 3, Morioka discloses a catalyst layer in a membrane electrode assembly of a polymer electrolyte membrane (PEM) fuel cell that uses hydrogen as a fuel for energy conversion(Figs. 1 and 2, [0009], [0013], [0018]), wherein: the catalyst layer is formed from a catalyst ink composition comprising a catalyst powder ([0013]), an ionomer(polymer electrolyte [0013]), and a solvent mixture of n-propanol and water ([0031]-[0032], [0046]) in which the water is present in an amount of 90% ([0046]) which is within the claim range of greater than 70 wt.% to less than 100 wt.% based on the total weight of the solvent mixture, thus reading on the limitation.
Continuing with claim 3, Morioka discloses the catalyst layer is formed by evaporating the solvent mixture and drying the catalyst ink composition([0009], [0048]). The instant claim includes a recitation describing the manner in which the catalyst layer is formed: by evaporating the solvent mixture and drying the catalyst ink composition. Said recitation appears to be product-by-process language. Even though product-by-process claims are limited and defined by the process, determination of patentability is based on the product itself. MPEP 2113.
Continuing with claim 3, Morioka discloses the pore volumes of the electrode catalyst layers 2 and 3 depend on the composition and dispersion conditions of the catalyst ink, and vary depending on the amount of polymer electrolyte, the type of dispersion medium, the dispersion method, the dispersion time, etc., and therefore it is preferable to use at least one of these, and preferably a combination of two or more of these, to control the pore volumes of the electrode catalyst layers 2 and 3 ([0032]). Morioka discloses in the membrane electrode assembly 11, the distribution of pore volume in the thickness direction of the electrode catalyst layer 2 (3) differs from that of the conventional structure, and the first electrode catalyst portion 2 a (3 a) has a denser structure than the second electrode catalyst portion 2 b (3 b)([0014]). Morioka discloses a membrane electrode assembly including an electrode catalyst layer that enhances the diffusibility of reactant gases, increases water retention without inhibiting the removal of water generated in electrode reactions, and exhibits high power generation characteristics even under low-humidification conditions([0010]) but does not explicitly disclose the catalyst layer comprises primary pores with a primary pore size of less than 20 nm and secondary pores with a secondary pore size of about 20 nm or greater.
It would have been obvious to one of ordinary skill in the art to provide the catalyst layer of Morioka with the catalyst layer comprises primary pores with a primary pore size of less than 20 nm and secondary pores with a secondary pore size of about 20 nm or greater in order to balance diffusibility of reactant gases and high power generation, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP §2144.05 (II-A).
Regarding claim 7, Morioka discloses all of the claim limitations as set forth above. Morioka further discloses the catalyst powder is Pt/C([0046]).
6. Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morioka (JP2017103142A) with citations from machine translation provided with this Office Action as applied to claim 3 above and further in view of Hodgkinson et al. (CA3153894A1).
Regarding claim 8, Morioka discloses all of the claim limitations as set forth above. Morioka discloses as an example of the fluorine based polymer electrolyte, Nafion can be used ([0028]) but does not explicitly disclose the ionomer is a low equivalent weight (EW) ionomer.
Hodgkinson teaches an electrocatalyst ink is a dispersion comprising an electrocatalyst material, an ion-conducting material and a diluent which, when dried, forms an electrocatalyst layer, preferably an electrocatalyst layer in a fuel cell membrane electrode assembly (p. 3, lines 20-22). Hodgkinson teaches the ion-conducting material is a proton conducting ionomer such as perfluorosulphonic acid, e.g., Nafion, Aciplex, Aquivion, Flemion (p. 7, lines 33-38). Hodgkinson teaches particular perfluorosulfonic acid ionomers include the Aquivion range available from Solvay, especially 830 EW (p. 8, lines 7-9).
It would have been obvious to one of ordinary skill in the art to include in the catalyst layer of Morioka, the ionomer is a low equivalent weight (EW) ionomer as taught by Hodgkinson as obvious to try choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. See MPEP 2143.
Regarding claim 9, modified Morioka discloses all of the claim limitations as set forth above. Modified Morioka further discloses the low equivalent weight (EW) ionomer has an equivalent weight of 830 (Hodgkinson, p. 8, lines 7-9).
Response to Arguments
7. Applicant’s arguments with respect to claim(s) 1-4 and 7-9 have been considered but are moot because the new ground of rejection does not rely on the combination of references 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 VICTORIA HOM LYNCH whose telephone number is (571)272-0489. The examiner can normally be reached 7:30 AM - 4:30 PM EST M-F.
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/VICTORIA H LYNCH/Primary Examiner, Art Unit 1724