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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/07/2026 has been entered.
Claim Rejections - 35 USC § 112
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 and 3-12 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 1 recites a Markush group “comprising carbon, nitrogen, boron, fluorine, hydrogen, silicon, titanium, and zirconium” in lines 7-8. However, this grouping is open ended. Thus, it is unclear what other alternatives are intended to be encompassed by this limitation. Examiner suggests amending the limitation “comprising” in line 7 to “consisting of” in order to overcome this rejection. Similar correction is required for the Markush group in lines 2-3 of claim 6.
Claims 3-12 are also rejected due to their dependence upon rejected claim 1.
Appropriate correction is required in order to overcome the indefiniteness rejections. Suggested corrections are bolded and underlined for emphasis only.
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.
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 3-12 are rejected under 35 U.S.C. 103 as being unpatentable over Dobrenizki et al. (US 2019/0051913) (Dobrenizki) (of record) in view of Tarutani (US 2018/0053948) (of record) and Wang (CN 101752575 with English Machine Translation).
Regarding claim 1, Dobrenizki discloses a layer system for coating a metal substrate to form a flow field plate (title; abstract; [0067]) comprising: at least one cover layer (3a) made of metal nitride, at least one intermediate layer (4b) supporting the cover layer (3a), and a lower layer (4a) supporting the intermediate layer (4b) (see Figure; [0075]), wherein the at least one intermediate layer (4b) is formed from titanium nitride ([0077]), and wherein the lower layer (4a) is formed from titanium ([0077]). Dobrenizki fails to disclose, however, that the cover layer (3a) is formed only from indium tin oxide having an indium content in the range of 75 to 85 vol%.
However, it is known in the art to provide flow field plates with an indium tin oxide cover layer. For instance, Tarutani teaches a flow field plate (separator/bipolar plate) (title; abstract; [0001]) that is provided with an ITO (indium tin oxide) outer cover layer ([0048]-[0050]; [0204]-[0205]; [0231]). Tarutani further teaches that the ITO cover layer can have an indium oxide content of between 20 and 80 mass% ([0205]; see also [0231]-[0232]; [0244]). Given that the density of indium is about 7.31 g/cm3, and the density of tin oxide is about 6.95 g/cm3, the volume ratio of indium to tin oxide can be calculated to be between 0.24:1 ((20/7.31)/(80/6.95)) and 3.8:1 ((80/7.31)/(20/6.95)), which leads to an indium oxide volume content of between 19% and 79%, overlapping the claimed range of 75 to 85 vol%. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Tarutani further teaches that this ITO cover layer enhances the surface contact resistance performance of the flow field plate, improves its conductivity, and enhances its durability ([0043]; [0045]-[0046]; [0050]; [0164]; [0200]; [0202]; [0205]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the cover layer disclosed by Dobrenizki with the ITO cover layer taught by Tarutani because they would have had a reasonable expectation that doing so would improve the surface contact resistance performance of the flow field plate, improve its conductivity, and enhance its durability.
Modified Dobrenizki still fails to explicitly disclose, however, that the indium tin oxide is doped with at least one element from a group consisting of carbon, nitrogen, boron, fluorine, hydrogen, silicon, titanium, and zirconium.
Wang teaches a similar cover layer for a flow field plate (title; abstract), wherein the cover layer is formed from indium tin oxide (abstract; [0041]; [0047]). Wang further teaches that the indium tin oxide is doped with fluorine and, optionally, small amounts of zirconium and/or titanium ([0041]; [0047]; [0025]; [0070] see Table 3), suggesting the claimed group of materials. Wang further teaches that this indium tin oxide cover layer has high corrosion resistance, low contact resistance, excellent conductivity, and low cost (abstract; [0010]; [0041]; [0047]).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the indium tin oxide in the cover layered disclosed by modified Dobrenizki to be doped at least one element from the claimed group of elements, as taught by Wang, because they would have had a reasonable expectation that doing so would lead to high corrosion resistance low contact resistance, excellent conductivity, and low cost. Thus, modified Dobrenizki satisfies all of the limitations in claim 1.
Regarding claim 3, modified Dobrenizki discloses all of the limitations as set forth above for claim 1. Modified Dobrenizki further discloses that the lower layer (Dobrenizki: 4a) can have a layer thickness of 100 nm (Dobrenizki: [0078]), suggesting the claimed range of 1 to 300 nm.
Regarding claim 4, modified Dobrenizki discloses all of the limitations as set forth above for claim 1. Modified Dobrenizki further discloses that the at least one intermediate layer (Dobrenizki: 4b) can have a layer thickness of 100 nm (Dobrenizki: [0078]), which is equal to 0.1 µm, suggesting the claimed range of 0.1 µm to 3.0 µm.
Regarding claim 5, modified Dobrenizki discloses all of the limitations as set forth above for claim 1. Modified Dobrenizki further discloses that the cover layer (Dobrenizki: 3a) can have a layer thickness of 100 nm (Dobrenizki: [0081]), which is equal to 0.1 µm, suggesting the claimed range of 0.01 µm to 15 µm. Furthermore, Tarutani teaches that the cover layer can have a layer thickness of 0.5 µm (Tarutani: [0244]), which also suggests the claimed range of 0.01 µm to 15 µm.
Regarding claims 6 and 11, modified Dobrenizki discloses all of the limitations as set forth above for claim 1. Wang further teaches that the indium tin oxide can be doped with zirconium and/or titanium at a content of less than 5 at% (Wang: [0041]; [0047]; [0025]; [0070] see Table 3), suggesting the claimed range of at most 35 at% and overlapping the claimed range of from 0.1 to 10 at%. In the case where the claimed range overlaps the range disclosed by the prior art, a prima facie case of obviousness exists. See MPEP §2144.05. Therefore, since modified Dobrenizki includes the teachings from Wang regarding the doping of the indium tin oxide cover layer, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for modified Dobrenizki to have satisfied the claimed ranges based on the range taught by Wang, absent any showing of unexpected results or criticality.
Regarding claim 7, modified Dobrenizki discloses a flow field plate (Dobrenizki: 1) comprising a metal substrate (Dobrenizki: 2) and a layer system (Dobrenizki: 3) according to claim 1 (Dobrenizki: see Figure; [0075]), having a structure of the flow field plate (Dobrenizki: 1) in the order of: metal substrate (Dobrenizki: 3), lower layer (Dobrenizki: 4a), intermediate layer (Dobrenizki: 4b), and cover layer (Dobrenizki: 3a) (see Figure; [0075]).
Regarding claim 8, modified Dobrenizki disclose all of the limitations as set forth above for claim 7. Modified Dobrenizki further discloses that the metal substate (Dobrenizki: 2) is formed from steel (Dobrenizki: [0075]).
Regarding claim 9, modified Dobrenizki discloses a fuel cell comprising at least one flow field plate (Dobrenizki: 1) according to claim 7 (title; [0076]-[0077]).
Regarding claim 10, modified Dobrenizki discloses all of the limitations as set forth above for claim 9. Modified Dobrenizki further discloses that the fuel cell is a polymer electrolyte fuel cell ([0076]), which necessarily includes at least one polymer electrolyte membrane ([0009]).
Regarding claim 12, modified Dobrenizki discloses all of the limitations as set forth above for claim 9. Modified Dobrenizki further discloses that the fuel cell can be an electrolyzer (abstract; [0022]).
Response to Arguments
Applicant’s arguments with respect to amended independent claim 1 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.
As such, claims 1 and 3-12 stand rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDON C DARBY whose telephone number is (571)272-1225. The examiner can normally be reached Monday - Friday: 7:30am - 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Katelyn Smith can be reached at (571) 270-5545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.C.D./Examiner, Art Unit 1749
/KATELYN W SMITH/Supervisory Patent Examiner, Art Unit 1749
Prosecution Insights