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 .
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 1-7, 21-26, 34-40 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 the limitation “a first flow channel in the pattern of flow channels has a shape that transitions from being linear to being cube-root”. This limitation renders the claim indefinite because the shape of the first flow channel is unclear. More specifically, the shape of a cube-root graph can be generally characterized as being an elongated “S” shape that extends infinitely (i.e., negative infinity to infinity). It is unclear whether the claim requires the shape of the first flow channel to have an elongated “S” shape that extend infinitely or a portion of a cube-root.
Claim 3 recites the limitation “a portion of the first flow channel that is linear is longer than a portion of the first flow channel that is cube-root”. This limitation renders the claim indefinite because it is unclear how the linear portion of the first flow channel is longer than an infinitely long cube-root portion.
Claim 4 recites the limitation “the shape of the first flow channel transitions from being linear to being cube-root in a continuous manner or in one or more discrete steps”. This limitation renders the claim indefinite because it is unclear how the shape transitions from linear to an infinitely long cube-root shape continuously or in discrete steps.
Claim 21 recites the limitation “each flow channel of the flow channels has a shape that transitions from being linear to being cube-root”. This limitation renders the claim indefinite because the shape of the flow channels is unclear. More specifically, the shape of a cube-root graph can be generally characterized as being an elongated “S” shape that extends infinitely (i.e., negative infinity to infinity). It is unclear whether the claim requires the shape of the flow channels to have an elongated “S” shape that extend infinitely or a portion of a cube-root.
Claim 22 recites the limitation “the cube-root has an optimal end-width of zero”. This limitation renders the claim indefinite because cube-root extends infinitely long in either direction and, thus, the claimed shape is unclear.
Claim 23 recites the limitation “at least one flow channel transitions from being linear to being cube-root but with truncation such that a width of an end of the at least one flow channel has a finite value other than zero”. This limitation renders the claim indefinite because cube-root extends infinitely long in either direction and, thus, the claimed shape is unclear.
Claim 25 recites the limitation “a second flow channel…has a shape that transitions from being linear to being cube-root”. This limitation renders the claim indefinite because the shape of the flow channel is unclear. More specifically, the shape of a cube-root graph can be generally characterized as being an elongated “S” shape that extends infinitely (i.e., negative infinity to infinity). It is unclear whether the claim requires the shape of the flow channel to have an elongated “S” shape that extend infinitely or a portion of a cube-root.
Further, dependent claims 2-7, 21-26, 34 are rendered indefinite due to their dependency on any of the indefinite claims as set forth above.
Claim 35 recites the limitation “a shape of a first flow channel in the pattern of flow channels is cube-root”. This limitation renders the claim indefinite because the shape of the first flow channel is unclear. More specifically, the shape of a cube-root graph can be generally characterized as being an elongated “S” shape that extends infinitely (i.e., negative infinity to infinity). It is unclear whether the claim requires the shape of the first flow channel to have an elongated “S” shape that extend infinitely or a portion of a cube-root.
Claim 36 recites the limitation “the pattern of flow channels comprises an interdigitated arrangement of inlet flow channels and outlet flow channels”. This limitation renders the claim indefinite because it is unclear how infinitely long channels are interdigitated.
Claim 37 recites the limitation “a portion of the first flow channel that is linear is longer than a portion of the first flow channel that is cube-root”. This limitation renders the claim indefinite because it is unclear how the linear portion of the first flow channel is longer than an infinitely long cube-root portion.
Further, dependent claims 36-38 are rendered indefinite due to their dependency on any of the indefinite claims as set forth above.
Claim 39 recites the limitation “a first flow channel in the pattern of flow channels has a shape that is linear towards one end and that is cube-root towards another end”. This limitation renders the claim indefinite because the shape of the first flow channel is unclear. More specifically, the shape of a cube-root graph can be generally characterized as being an elongated “S” shape that extends infinitely (i.e., negative infinity to infinity). It is unclear whether the claim requires the shape of the first flow channel to have an elongated “S” shape that extend infinitely or a portion of a cube-root.
Further, dependent claim 40 is rendered indefinite due to their dependency on any of the indefinite claims as set forth above.
Response to Arguments
Applicant's arguments filed 11/4/2025 have been fully considered but they are not persuasive.
With respect to applicant’s remarks directed to the non-statutory double patenting rejections (see Remarks filed 11/4/2025), these obviousness-type double patenting rejections have been maintained in this Office Action in the absence of any specific arguments or timely filed terminal disclaimer.
Applicant’s arguments with respect to claim(s) 1-7, 21-26, 34-40 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-5, 21-26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 17/980,023 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-5, 21-23 are disclosed in claims 1-20 of the copending application disclosing a porous electrode comprising flow channels defined in a porous material, the flow channels having a shape that at least partially approximates a cube-root profile.
With respect to instant claims 24-26 reciting an intended use of the porous electrode, 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.
“[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material.” The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). See MPEP 2114.
In this instance, Thomsen discloses the claimed structure directed to the porous electrode and, thus, is capable of performing the intended use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 17/980,023 in view of Thomsen et al. (US 2017/0288243A1).
Regarding claim 6-7, claims 1-20 of the copending application does not disclose an impervious substrate to which the porous layer is affixed; the impervious substrate comprises a second pattern of flow channels defined therein.
Thomsen discloses a cell frame comprises a support frame 20, and bipolar plate 30 integrated with support frame 20 (see Title, Abstract, [0043]-[0049], Fig. 1-11), wherein support frame 20 includes inlet ports 22a,22b, outlet ports 24a,24b, inlet manifold 26, outlet manifold 28 (0044], Fig. 1-11).
An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. Leapfrog Enterprises Inc. v. Fisher-Price Inc., 82 USPQ2d 1687 (Fed. Cir. 2007); see also KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007).
The claim would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
The claim would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If the leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.”
It has been held that choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is generally within the skill of the art.
This is a provisional nonstatutory double patenting rejection.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NICOLE BUIE-HATCHER can be reached at (571)270-3879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James Lee/Primary Examiner, Art Unit 1725 2/3/2026