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 amendments were received on 1/27/26. Claims 1, 3 are amended. Claims 8, 24, 28 are cancelled. Claims 17-19, 26, 27 are withdrawn-currently amended
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.
Claim Rejections - 35 USC § 112
The rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, on claim 1-5, 7, 8 are withdrawn because Applicant amended the claim.
The rejection 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as being indefinite for failing to particularly point out and distinctly claim the subject matter on claim 3 is withdrawn because Applicant amended the claim.
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 1-5, 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. Specifically, the limitation “the microporous layer” in line 7 is unclear which microporous layer, in lines 2 and 4, it is referring to. Appropriate corrections or further clarification is required.
Claims 1-5, 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. Specifically, the claims are to a “a gas diffusion layer” however, the Applicants also claim a “catalyst layer” that isn’t part of the gas diffusion layer. It is unclear if the Applicants are indeed claiming a gas diffusion layer alone and as argued against Kim et al. It appears there are some contradictions that a gas diffusion layer should be stand-alone as argued but the Applicants are including the catalyst layer when claiming a gas diffusion layer. Appropriate corrections or further clarification is required.
Claims dependent on the rejected independent claim are also rejected for the same reasons.
Claim Analysis
As best understood, the recitation that “a gas diffusion layer” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self- contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951.).
Claim Rejections - 35 USC § 102
The rejection under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al., on claims 1-5, 7 are maintained. The rejection are further modified in view of the Applicant’s amendments
The rejection under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al., on claims 1, 2, 4, 5, 7, 8 are withdrawn because the Applicant has amended the claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US Publication 2010/0255407).
Regarding claim 1, the Kim et al. reference discloses a gas diffusion layer for an electrochemical device, comprising polymer dots on a first side to increase the surface area of the first side. The diffusion layer further comprises a second side and a catalyst layer on the first side (Fig. 2). The first side in contact with the catalyst layer has increased surface area relative to a microporous layer surface without engineered surface roughness (a microporous layer to Applicant’s Fig. 3a). The Kim et al. reference disclose a gas transport layer (1) having a first side in contact with the second side of the microporous layer gas diffusion layer and a second side opposite the first side of the gas transport layer.
Please note that the recitation “a gas diffusion layer” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self- contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951.).
Regarding claim 2, the Kim et al. reference discloses wherein the first side in contact with the catalyst layer comprises surface features (dots) having an average depth (height) of between about 10 nm and about 1000 µm (Example 1).
Regarding claim 3, the Kim et al. reference discloses the surface features have at least one lateral dimension (lower diameter) between about 10 nm and about 1000 µm (Example 1).
Regarding claim 4, the Kim et al. reference discloses he diffusion layer comprising surface features that are regularly shaped (Fig. 2).
Regarding claim 5, the Kim et al. reference discloses the diffusion layer comprising surface features that are irregularly shaped (Fig. 5, in between the dots).
Regarding claim 7, the Kim et al. reference discloses the diffusion layer comprising surface features that are periodically arranged (Fig. 2).
Response to Arguments
Applicant's arguments filed 1/27/26 have been fully considered but they are not persuasive.
The Applicant argues, “Kim teaches that dots are separate from the gas diffusion layer and are placed on the surface of the diffusion layer,” “not part of the gas diffusion layer but instead may be a separate coating on the gas diffusion layer.”
However, as best understood and as claimed, the gas diffusion layer comprises several layers including a catalyst layer, a microporous layer and a gas transport layer, these are to be understood as the claimed “gas diffusion layer.” The Kim reference teaches that the gas diffusion layer also comprises a microporous layer facing a catalyst layer and on the other side is a gas transport layer, this is synonymous to the claimed invention.
If the catalyst layer isn’t part of the gas diffusion layer as claimed, it is then subject to a 35 U.S.C 112, second paragraph rejection which is consistent with Applicant’s arguments against Kim et al. If the claimed catalyst layer is indeed part of the diffusion layer, then the Kim reference applies as the diffusion layer is multiple layers that function the same claimed invention. Appropriate corrections or further clarification is required.
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 HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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