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 .
Response to Amendment
The amendment received 2/5/2026 (“Amendment”) has been entered.
Response to Arguments
Applicant's arguments filed 2/5/2026 have been fully considered but they are not persuasive. Applicant argues 1) laser surface treated region is not a product by process limitation. Examiner respectfully disagrees. The claim does not require structural and physical limitations with regards to the laser surface treated region. To overcome this rejection, Applicant should amend the claim to add specific structural features that result from the laser surface treatment. Remarks 1-5
2) Applicant argues the cited prior art does not teach amended claim 1: the plate is a formed metal sheet that is electrically couple to an adjacent plate and the contact point is electrically coupled to the adjacent plate. Examiner disagrees, and these limitations are accordingly rejected below.
3) In response to applicant's argument that Scartozzi in view of Dadheech are directed to addressing a problem related to water management and would not result in the approach as claimed , the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The claims are directed to a structure for an electrochemical device, and the cited prior art teaches the structure as claimed. With regards to the argument of claim 13 as noted by the Applicant; Examiner notes, the claim was rejected accordingly:
Dadheech teaches regions that are microtextured and non textured, i.e laser treated surface and outside laser treated surface [0044], however does not explicitly teach electrical conductivity as claimed. Electrical conductivity is a physical property including the material composition, temperature and structure. Since Dadheech teaches the surfaces are microtextured and non-textured, this means that the laser treatment is changing the physical property of the plate. A skilled artisan would easily understand, the microtexture would increase the electrical conductivity as it reduces the resistance. Additionally, a laser treated surface modifies the grain boundaries, porosity and phase composition, all which influence electron mobility. Thus, this argument is moot.
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.
Claim 1 thus dependent claims 2-16 and 19 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 was amended to recite the plate is a formed metal sheet that is electrically couple to an adjacent plate and the contact point is electrically coupled to the adjacent plate. The applicant provided para 005 and 0025 as support for these amendments, however Examiner notes, the cited paragraphs do not teach the newly added matter. The Applicant is required to respond to this rejection providing accurate support for the newly added matter.
In addition, the term “electrically coupled” is considered to be indefinite, as it is unclear how are these plates electrically coupled. Applicant is required to provide further explanation, as the remarks do not provide any such detail
Newly added Claim 19 recites the limitation "the depressions". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1,3-8 and 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US20030091884A1 (Scartozzi).
Regarding claim 1, Scartozzi teaches a power tap device for use in a fuel cell stack having a plurality of stackable items including separator plates, and membrane electrode assemblies each having an anode and cathode [abs]. Scartozzi teaches an electrochemical, media-guiding system 0002], comprising: a plate, wherein the plate is a separator plate [i.e. #23, bipolar plate- 0025-0030], and at least one contact point [depicted below] forming a voltage take-off point, wherein the at least one contact point is arranged in a non-media-guiding region of the plate [depicted below; as can be seen the media does not flow thru the contact region as there are no channels/holes therefore, no media can flow thru] .
wherein the plate is a formed metal sheet that is electrically coupled [#29; 0026 i.e. fitting or coupling] to an adjacent plate [#31; end plate] of the electrochemical system [0029; i.e The bipolar plates 12, 22, and 23 are electrically conductive, and are made of material capable of withstanding fuel cell operating conditions and that is chemically inert. For example, graphite, titanium, niobium, titanium oxide, stainless steel, carbon composites, electroplated materials, or other structurally or functionally equivalent materials could be employed for the plates]; and wherein the at least one contact point is electrically coupled to the adjacent plate [0037- a noncatalytic electrically conductive diffusion layer is affixed on the anode and cathode electrodes and has a given porosity. In one embodiment, the noncatalytic electrically conductive diffusion layer has a first diffusion layer which is positioned in ohmic electrical contact with each of the electrodes, and a second diffusion layer which is positioned in ohmic electrical contact with the underlying first diffusion layer. In an alternative form of the membrane electrode diffusion assembly, a third diffusion layer is provided, affixed to the main body prior to affixing the first and second diffusion layers thereto]
It is noted, the claimed “has a laser-surface- treated region” is a product by process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Therefore, it is the Examiner’s position, laser surface treated region is not given patentable weight, as the claims are directed to the apparatus, and Scartozzi teaches the apparatus as claimed.
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Regarding claim 3, Scartozzi teaches wherein the contact point is electrically and mechanically, connected to a transmission device [#38 i.e. power tap device; 0038; power tap devices 38 (see FIGS. 1 and 2). The power tap devices 38 respectively include first and second electrically conductive major outer surfaces 40 and 42 and a dielectric 44 separating the first major outer surface 40 from the second major outer surface 42. In the illustrated embodiment, the first and second major outer surfaces 40 and 42 of the power tap device are defined by respective electrically conductive plates] and the connection is force-fit and/or form-fit [0038-0041; the plates 40 and 42 are supported by or mounted to the dielectric 44 (e.g., with screws, bolts, straps, heat-resistant glue or any other appropriate fastener; each power tap device 38 is interposed between monopolar plates 22 and 23 with the planar sides of the plates 22 and 23 in engagement with the conductive surfaces 40 and 42 of the power tap device 38.].
Regarding claim 4, Scartozzi teaches wherein the contact point forms a socket for a plug-in element of the transmission device or forms a plug-in element for a socket of the contact element of the transmission device [0038; it is noted, Scartozzi teaches that the contact point and the transmission device are connected by a screw/bolt, etc, therefore, the contact must have a socket or a plug in element to receive the screw or bolt].
Regarding claim 5, Scartozzi teaches wherein the contact point is a flat, substantially planar, region that extends at least in part along a flat side of the plate [0041; fig. 4].
Regarding claim 6, Scartozzi teaches further comprising a contact element for electrical and mechanical, force-fitting and/or form-fitting, connection to a contact point of the plate [0037-0038; the contact element is the extension portion of the contact point as noted in the instant spec, the contact element can be in a form of cable which is received in the socket of the transmission device, and Scartozzi teaches that the contact point and transmission device are connected by a screw/bolt, etc.]
The following “wherein the contact element has a laser-surface-treated region” is a product by process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Therefore, it is the Examiner’s position, laser surface treated region is not given patentable weight, as the claims are directed to the apparatus, and Scartozzi teaches the apparatus as claimed.
Regarding claim 7, Scartozzi teaches wherein the contact element is a plug- in element for a socket of the contact point of the plate or as a socket for a plug-in element of the plate [0038; the plates 40 and 42 are supported by or mounted to the dielectric 44 (e.g., with screws, bolts, straps, heat-resistant glue or any other appropriate fastener); however, in the embodiment shown in FIG. 1, the plates and dielectric are discrete components that are merely placed side by side and stacked together with the other components of the stack].
Regarding claim 8, Scartozzi teaches further comprising a transmission device for use in measuring an electrical voltage and/or in transmitting an electrical current onwards from at least one sub-region of an electrochemical system [0038, 0056].
Regarding claim 14, Scartozzi teaches comprising a plurality of stacked separator plates, which are arranged between a first current collector plate and a second current collector plate [0020, 0024; 0037; fig 4; These individual anode and cathode electrodes are disposed in ionic contact therewith, a noncatalytic electrically conductive diffusion layer is affixed on the anode and cathode electrodes and has a given porosity. In one embodiment, the noncatalytic electrically conductive diffusion layer has a first diffusion layer which is positioned in ohmic electrical contact with each of the electrodes, and a second diffusion layer which is positioned in ohmic electrical contact with the underlying first diffusion layer. In an alternative form of the membrane electrode diffusion assembly, a third diffusion layer is provided, affixed to the main body prior to affixing the first and second diffusion layers thereto ].
Regarding claim 15, Scartozzi teaches comprising a transmission device [0038; #38 power tap device].
Regarding claim 16, Scartozzi teaches comprising a plurality of stacked media distribution plates, which are arranged between a first current supply plate and a second current supply plate [0020-0025. 0037; fig. 4;].
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.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20030091884A1 (Scartozzi) further in view of US20180269497A1 (Kunz).
Regarding claim 2, Scartozzi teaches wherein the plate is a separator plate [i.e. bipolar plate] comprising: a media-guiding inner region [this is where the media is flowing thru], a non-media-guiding outer region [no media is flowing thru] [0030-0033] however is silent with respect to at least one sealing element which seals off the media-guiding inner region with respect to the non-media-guiding outer region, wherein the contact point is provided in the outer region. Kunz teaches a separator plate and teaches the sealing element as claimed [abs, 0059-0061]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Scartozzi in view of Kunz as adding the sealing element helps to seal the passage openings and make the structure as compact as possible [0068].
Claim(s) 9-13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20030091884A1 (Scartozzi) further in view of US20080248368A1 (Dadheech).
Regarding claim 9, Scartozzi does not teach wherein the surface has periodic surface structures with a mean spatial period of less than 10 µm. Dadheech teaches Methods and materials to improve water management in a fuel cell by microtexturing fuel cell elements, including the separator plate and/or the gas diffusion media [abs]. Dadheech teaches the has periodic surface structures with a mean spatial period of less than 10 µm [0045]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Scartozzi in view of Dadheech as doing so aids in improving water management of the fuel cell [0010-0012] and Dadheech teaches a portion of the surface of the separator plate channels or the surface of the gas diffusion media is microtextured to increase its hydrophilicity or hydrophobicity, respectively, or both. Microtexturing increases the surface area of the material and increases the hydrophilic or hydrophobic character of the microtextured material [0036-0037].
It is noted, “laser-surface-treated region” is a product by process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Therefore, it is the Examiner’s position, laser surface treated region is not given patentable weight, as the claims are directed to the apparatus, and Scartozzi teaches the apparatus as claimed.
Regarding claim 10, Scartozzi teaches the plates have flow field plates, not shown, however does not teach the surface structures comprise depressions, which extend substantially parallel to one another. Dadheech teaches the surface the plates comprise depressions which extend substantially parallel to one another [p. 0039-0043]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Scartozzi in view of Dadheech and have the depressions as claimed as these depressions enable the distribution of gases and water and is an essential feature in a fuel cell structure [0014-0015].
Regarding claim 11, Dadheech teaches wherein the depressions have a depth of at least 8 nm, and/or at most 0.5 µm, a width of at least 0.1 µm and/or at most 2 µm, and/or a period in one spatial direction of at least 0.3 µm and/or at most 3 µm [0045].
Regarding claim 12, Dadheech teaches wherein the surface structures are at least in part arranged periodically in relation to one another at least in one spatial direction [fig. 1, 2].
Regarding claim 13, Scartozzi does not teach wherein an electrical conductivity is greater in the laser-surface-treated region than outside of the laser-surface-treated region. Dadheech teaches regions that are microtextured and non textured, i.e laser treated surface and outside laser treated surface [0044], however does not explicitly teach electrical conductivity as claimed. Dadheech further teaches at least a portion of the surface of the separator plate channels or the surface of the gas diffusion media is microtextured to increase its hydrophilicity or hydrophobicity, respectively, or both. Microtexturing increases the surface area of the material and increases the hydrophilic or hydrophobic character of the microtextured material. Materials with contact angles of less than 90 degrees are hydrophilic. Microtexturing hydrophilic materials can reduce the contact angle by at least about 30 degrees, compared to non-textured material, and can even make materials superhydrophilic, wherein the resulting contact angle is less than about 20 degrees and can approach 0 degrees. Conversely, materials with contact angles of greater than 90 degrees are hydrophobic. Microtexturing hydrophobic materials can increase the contact angle by at least about 30 degrees, compared to non-textured material, and can even make materials superhydrophobic, wherein the resulting contact angle is greater than about 160 degrees and can approach 180 degrees [0037]. Therefore, it is the Examiner’s position, that Dadheech inherently discloses that the surfaces that are laser treated by microtexturing would have a greater electrical conductivity than outside the laser treated area that are not textured as increasing the hydrophilicity/hydrophobicity affects electrical conductivity.
It is noted, “laser-surface-treated region” is a product by process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). Therefore, it is the Examiner’s position, laser surface treated region is not given patentable weight, as the claims are directed to the apparatus, and Scartozzi teaches the apparatus as claimed.
Regarding claim 19, Dadheech teaches depressions as claimed in claim 10 and 13. In regards to the claimed” wherein the depressions are elongated depressions having longitudinal axes which extend substantially parallel to one another within a region enclosed by a grain boundary; Dadheech teaches 0039- surface depressions surrounded by a smooth rim [i.e. refers to grain boundary] or solidified melt of the surface material, without the need to physically contact the material. Topography of the pores or depressions is reproducible and can be controlled by varying the interaction parameters. Further Dadheech teaches the projections/depressions can vary in shapes, one being a rectangular and other geometric shapes, therefore, teaches the elongated depressions [0042; The projections may include arrays of bumps, pyramids, cylinders, cones, square or rectangular blocks, and other geometric shapes. A photomicrograph of an exemplary microtexture is shown in FIG. 3 along with a scale of 100 micrometers. FIG. 3 shows how selective ablation of surface material may leave projections of unablated material of varying heights. While FIG. 3 illustrates generally cylindrical projections, any of the aforementioned arrays of shapes or combinations of shapes may be produced]. t would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Scartozzi in view of Dadheech and have the depressions as claimed as these depressions enable the distribution of gases and water and is an essential feature in a fuel cell structure [0014-0015].
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.
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/S.G./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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