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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a receiving unit for receiving a membrane electrode assembly and at least a bipolar plate with at least one opening and/or at least one alignment structure“ in claim 16.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 16-23 are 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.
Claim 16 recites the limitation “a holding unit for receiving the membrane electrode assembly and at least the bipolar plate with at least one opening and/or at least one alignment structure” and “a receiving unit is adapted to orient the membrane electrode assembly and the bipolar plate in such a way that the membrane electrode assembly covers the at least one opening in the bipolar plate and/or the at least one alignment structure and/or extends over the bipolar plate in at least one area” which is deemed to be new matter.
With respect to the claim limitation “a holding unit”, the instant specification discloses in paragraph [0023]:
…the pre-arrangement site of the manufacturing arrangement further comprises a holding unit which is adapted to receive and hold at least one membrane electrode assembly and bipolar plate or a plurality of bipolar plates and membrane electrode assemblies in a pre-arranged orientation.
and discloses in paragraph [0061]:
…the cutting device 6 may comprise e.g. at least one holding unit (not illustrated), which is adapted to receive the membrane electrode assembly 2 and the bipolar plate 4 and orient them to each other. Of course, the holding unit may also be adapted to receive a pre-mounted unit fuel cell as such.
Thus, according to the instant specification, the holding unit, as part of the pre-arrangement site, is adapted to receive and hold at least one membrane electrode assembly and bipolar plate or a plurality of bipolar plates and membrane electrode assemblies in a pre-arranged orientation or, as part of the cutting device, is adapted to receive the membrane electrode assembly 2 and the bipolar plate 4 and orient them to each other. This conflicts with claim 16 because the claim assigns the holding unit the function of ‘receiving the MEA and bipolar plate’ and separately assigns the receiving unit the function of ‘orienting the MEA and the bipolar plate’. Accordingly, the instant specification does not support the claim 16 as amended in the amendment filed 10/10/2025.
With respect to the claim limitation “the receiving unit”, the instant specification discloses in paragraph [0020]:
According to a further embodiment, the manufacturing arrangement further comprises at least one fastening device for fastening the membrane electrode assembly to the bipolar plate so that a pre-mounted unit fuel cell is provided. The fastening device may be part of the pre-arrangement site or may be located in a separate fastening site. Preferably, the membrane electrode assembly and the bipolar plate, which are received in the receiving unit are fastened to each other, preferably by gluing, welding, particularly ultrasonic welding or laser welding, and/or soldering, before the membrane electrode assembly is cut. For that the fastening device may comprise a gluing unit and/or a welding unit. This allows for a fast and secure fastening process.
According to the instant specification, the receiving unit is part of a fastening device for providing a pre-mounted unit fuel cell. This conflicts with claim 16 because the claim recites a holding unit for receiving a MEA and bipolar plate followed by a receiving unit adapted to orient the MEA and bipolar plate. Accordingly, the instant specification does not support the claim 16 as amended in the amendment filed 10/10/2025.
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 16-23 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.
Claim 16 recites the limitation "the unit fuel cell” in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to which of the plurality of stacked unit fuel cells and/or at least a unit fuel cell said limitation refers to.
Claim 21 recites the limitation "the plurality of unit fuel cells”. There is insufficient antecedent basis for this limitation in the claim. It is unclear as to which of the unit fuel cells said limitation refers to.
Claim limitations “a holding unit for receiving the membrane electrode assembly and at least the bipolar plate with at least one opening and/or at least one alignment structure” and “a receiving unit is adapted to orient the membrane electrode assembly and the bipolar plate in such a way that the membrane electrode assembly covers the at least one opening in the bipolar plate and/or the at least one alignment structure and/or extends over the bipolar plate in at least one area” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The disclosure is devoid of any structure that performs the function in the claim, or no association between the structure and the function can be found in the specification.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Further, dependent claims 17-23 are rendered indefinite due to their dependency on any of the indefinite claims as set forth above.
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.
Claim(s) 16-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN106876756A, refer to English machine translation.
Regarding claim 16, CN106876756A discloses a manufacturing arrangement for manufacturing a fuel cell stack with a plurality of stacked unit fuel cells or at least a unit fuel cell of the fuel cell stack, wherein the unit fuel cell comprises at least a bipolar plate and a membrane electrode assembly (continuous production method for single cell used for fuel cell including MEA and bipolar plate, see Title, Abstract, Fig. 1-6), and the manufacturing arrangement comprising at least:
a holding unit for receiving the membrane electrode assembly and at least the bipolar plate with at least one opening and/or at least one alignment structure (guide reel 3 at which cut bipolar plate and MEA join, see p.4, Fig. 1-6), and wherein a receiving unit is adapted to orient the membrane electrode assembly and the bipolar plate in such a way that the membrane electrode assembly covers the at least one opening in the bipolar plate and/or the at least one alignment structure and/or extends over the bipolar plate in at least one area (bipolar plate 9, cutting device 2 for cutting bipolar plate, guide reel 3 at which cut bipolar plate and MEA join, see p.4, Fig. 1-6); and
a cutting device for cutting a membrane electrode assembly comprising a cutting element which is adapted to cut the membrane electrode assembly in a predetermined area, so that the membrane electrode assembly has at least one cut opening, which resembles the at least one opening of the bipolar plate, and/or at least one cut alignment structure, which resembles the at least one alignment structure of the bipolar plate, and/or at least one cut alignment structure, which extends over a periphery of the bipolar plate for aligning at least the unit fuel cell by means of the membrane electrode assembly (cutting device 5,8, see p.4, Fig. 1-6).
Regarding claim 17, CN106876756A all of the claim limitations as set forth above. CN106876756A further discloses the cutting element is a cutting punch having a shape which resembles a form of one or more opening(s) in a bipolar plate and/or one or more specific contour(s) of the bipolar plate and/or one or more alignment structures and/or the shape of the bipolar plate as such (cutting device 8, see p.4, Fig. 1-6; stamping, see p.2).
Regarding claim 18, CN106876756A all of the claim limitations as set forth above. CN106876756A further discloses the manufacturing arrangement further comprises a fastening device, which is adapted to fasten the membrane electrode assembly and the bipolar plate, which are received in a holding unit, to each other (positioning groove 16, positioning spring 17, see p.4, Fig. 6).
Regarding claim 19, CN106876756A all of the claim limitations as set forth above. CN106876756A further discloses the receiving unit is further adapted to receive a plurality of bipolar plates and membrane electrode assemblies, and the cutting element is adapted to cut a plurality of membrane electrode assemblies (see Fig. 1-6).
Regarding claim 20, CN106876756A all of the claim limitations as set forth above. CN106876756A further discloses the manufacturing arrangement further comprises a first manipulation unit for handling the bipolar plate, and a second manipulation unit for handling the membrane electrode assembly, wherein the first manipulation unit and the second manipulation unit are adapted to arrange the membrane electrode assembly and the bipolar plate in the receiving unit in a predefined orientation to each other (MEA roll 1, bipolar plate roll 9, see p.4, Fig. 1-6).
Regarding claim 21, CN106876756A all of the claim limitations as set forth above. CN106876756A further discloses the manufacturing arrangement further comprises an alignment and/or stacking unit, which is adapted to receive, align and/or stack a plurality of unit fuel cells, and comprises at least one alignment element which is adapted to align the plurality of unit fuel cells based on a cut area of the membrane electrode assembly (third stage of pipeline is provided with flow carrier 6, and unit cells obtained by second stage pipeline are sequentially stacked in the flow carrier 6 to obtain a single battery pack, see p.5, Fig. 1-6).
Regarding claim 22, CN106876756A all of the claim limitations as set forth above. CN106876756A further discloses the cut area is the at least one cut alignment structure, and the at least one alignment element has a complementary shape to the at least one cut alignment structure (in example 2, MEA is introduced into the second stage line where it is compounded with the bipolar plate, after the MEA is laminated on the bipolar plate, it enters correcting device b4, aligns the position of bipolar plate and MEA and then enters cutting device b5 to cut the cell, see p.5, Fig. 1-6).
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.
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.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN106876756A, refer to English machine translation, as applied to claims 16-22 above, in view of Zhang et al. (US 2022/0158217A1).
Regarding claim 23, CN106876756A all of the claim limitations as set forth above. However, CN106876756A does not disclose the alignment and/or stacking unit further comprises a first alignment element and a second alignment element, and further comprises a handling unit which is adapted to turn at least one of the unit fuel cells by 180° and arrange a turned unit fuel cell at at least one un-turned unit fuel cell, so that the first alignment element is used for aligning the un-turned unit fuel cell and the second alignment element is used for aligning the turned unit fuel cell.
Zhang discloses a method for assembling a fuel cell stack with a bipolar plate, wherein a bipolar plate is rotated 180° to prevent the MEA from wrinkling and avoid blockage of a reactant flow channel and poor contact (Title, Abstract).
CN106876756A and Zhang are analogous art because they are concerned with the same field of endeavor, namely method of assembling fuel cell stack.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the apparatus of CN106876756A to provide a means for rotating every other bipolar plate 180° because Zhang teaches obtaining a fuel cell with improved efficiency by preventing wrinkling of the MEA and better contact.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive.
With respect to applicant’s arguments directed to claim 16 amended to recite “a holding unit” and a “receiving unit” (see Remarks filed 10/10/2025), the amended claim raises new issues 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 as set forth above.
The applicant argues the claim amendments filed 10/10/2025 amend claim 16 to clarify indefiniteness issues relating to the “receiving unit” (see Remarks filed 10/10/2025).
However, this is not found to be persuasive because the claim limitations “a holding unit for receiving the membrane electrode assembly and at least the bipolar plate with at least one opening and/or at least one alignment structure” and “a receiving unit is adapted to orient the membrane electrode assembly and the bipolar plate in such a way that the membrane electrode assembly covers the at least one opening in the bipolar plate and/or the at least one alignment structure and/or extends over the bipolar plate in at least one area” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The claim amendments filed 10/10/2025 do not amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the applicant argues that the receiving unit comprises a structural support frame configured to orient the MEA and the bipolar plate so that the MEA covers the opening in bipolar plate, see Remarks filed 10/10/2025 on p.6) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). A structural support frame is not recited in the instant claims nor is it disclosed in the instant specification. Paragraphs [0023], [0020], [0037]-[0039] of the instant specification, which are cited by the applicants to show support, do not disclose a structural support frame.
In response to applicant's argument directed to order of steps performed by the claimed “manufacturing arrangement” (see Remarks filed 10/10/2025 on p.6-7), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Product-by-process claims are not given patentable weight since the method does not provide additional structure to the claim (see MPEP 2113 and 2114). Product claims are granted patentable weight based on their final structure and not by the method of which it was made or any intermediate products thereof (see MPEP 2113 and 2114).
In this instance, the instant claims are directed to an apparatus claim not a method claim (i.e., a “manufacturing arrangement”). Since the apparatus of the prior art is considered capable of performing the claimed functions, the claim is considered to be met.
With respect to applicant’s arguments directed to Zhang failing to correct the alleged deficiencies of CN106876756A (see Remarks filed 10/10/2025 on p.7-8), said reference is not relied upon to teach or suggest the alleged deficiencies.
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 JAMES LEE whose telephone number is (571)270-7937. The examiner can normally be reached M-F: 9AM - 5PM.
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/James Lee/Primary Examiner, Art Unit 1725 1/9/2026