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 .
Election/Restrictions
Applicant's election with traverse of Group 1: claims 1-7 in the reply filed on 12/08/2025 is acknowledged. The traversal is on the grounds that the International Searching Authority found unity of invention to be present when it examined similar claims in the corresponding PCT Application (PCT/JP2021/013832) and the common technical feature of the annular packing material is such that a search for one group will produce results applicable to all groups, based on said annular packing material. These arguments are not persuasive because MPEP 1893.03(d) states “when making a lack of unity requirement, the examiner must (1) list the different groups of claims and (2) explain why each group lacks unity with each other group (i.e., why there is no single general inventive concept) specifically describing the unique special technical feature in each group. The examiner may make a lack of unity requirement in a national stage application even if no such requirement was made by the ISA or IPEA.” and the search for an electrochemical module required by group 2 is not required in group 1; the search for an electrochemical device comprising fuel converter required by group 3 is not required in group 1; the search for an electrochemical device comprising a power converter required by group 4 is not required for group 1, the search for a solid oxide fuel cell having a power generation reaction required by group 5 is not required for group 1, the search for the solid oxide electrolysis cell comprising an electrolysis reaction required by group 6 is not required in group 1 and the conclusion of lack of unity is supported with the reason thereof in the restriction requirement dated 10/06/2025.
The requirement is still deemed proper and is therefore made FINAL.
Claims 8-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/08/2025.
Claim Rejections - 35 USC § 102
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 1-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP’173 (JP 05-223173).
Regarding claims 1-5 and 7, FIG. 2 of JP’173 teaches a packing 7 having a round flat plate ring comprised of a substrate 8 made of soft metal and a coating layer 9 made of hard metal that is formed on both end surfaces of the substrate 8. The coating layer may be aluminum oxide. The substrate 8 may be made of copper. See page 3 of the machine translation. Metal inherently expands thermally.
Claim Rejections - 35 USC § 103
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP’360 (JP S59-62360 U) in view of JP’656 (JP S60-182656 A).
Regarding claims 1-7 JP’360 teaches a gasket 9 having a annular shape (FIG. 1 and FIG. 2) comprising heat-resistant bimetal material 9a and 9b made of iron, nickel and iron, copper, etc., page 2 of the machine translation (claim 4).
JP’360 teaches insulating layers 10 (FIG. 2), but does not recite the insulating material is a metal oxide. However, JP’656 provides an insulating film 7 made of metal oxide such as alumina to formed on the surface that is to contact with a gasket 2 (FIG. 2 and abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the insulating layers 10 of the gasket of JP’360 made of metal oxide such as alumina because JP’656 teaches a suitable insulating material provided on the surface of a gasket may be metal oxide.
Conclusion
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/KENDRA LY/Primary Examiner, Art Unit 1749