METHOD FOR PRODUCTION OF AN AT LEAST TWO-LAYERED LAMINATE OF A MEMBRANE ELECTRODE ASSEMBLY
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 .
Response to Amendment
In response to communication filed on 9/23/2025:
No claims have been amended.
Previous drawing objections have been withdrawn due to amendment.
Rejection of claim 3 under 35 USC 112(a) has been withdrawn. All other rejections under 35 USC 112(a) and 112(a) have been upheld.
Response to Arguments
Applicant's arguments filed 9/23/2025 have been fully considered but they are not persuasive.
The Applicant discloses: “It is well settled that the fact that some experimentation may be required does not make it undue, if the art typically engages in such experimentation. A considerable amount of experimentation is permissible, if it is merely routine. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). "Enablement is not precluded by the necessity of some experimentation such as routine screening." Id. It is therefore submitted that in view of the specification disclosure, the present claims define the recited combination of features adequately and in enabling fashion.”
The Examiner respectfully traverses. How is it routine in this particular case when curing time is being measured and taken into consideration?
The Applicant discloses: “Even assuming if some experimentation may be required to practice the present invention, Applicant submits that the level of experimentation afforded by the present specification and the understanding of one of ordinary skill in the relevant art falls well within the permissible routine screening recognized by Wands. "The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation." United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988). "The specification need not disclose what is well known in the art." In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) citing Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463 (Fed. Cir. 1984). Liquid adhesives are well known in the art as being used to couple components of membrane electrode assemblies. For example, liquid adhesives are described in WO 2006/047950A1 and WO 2013/178987A1, each of which are provided in the specification of the present application to describe the state of the art. Accordingly, one of ordinary skill in the relevant art would understand which liquid adhesives may be used in the method set forth in the present claims, and experimentation would be limited to determining which liquid adhesive is best suited for a given application.”
The Examiner respectfully traverses. The level of experimentation afforded by the present specification and the understanding of one of ordinary skill in the relevant art does not fall well within the permissible routine screening recognized by Wands. There is no disclosure of any experimental parameters that are necessary to interpret the claims so that one of ordinary skill in the art can use the invention. The specification does not disclose what the liquid adhesive comprises at all and this adhesive must have a shorter curing time than the production aid. How can one of ordinary skill in the art select an adhesive material out of potentially thousands of options to have a shorter curing time that the claimed production aid? While the Applicant discloses WO 2006/047950 A1 and WO 2013/178987 A1 as providing descriptions of liquid adhesives, they do not offer any enablement. Reference ‘950 simply discloses a hot melt adhesive in a hot melt adhesive layer is one or more adhesive selected from the group consisting of: polyaminoesters, ethylene - vinyl acetate polymers and polyamides. Polyaminoesters and ethylene-vinyl acetate polymers can have curing times of 10-30 minutes, whereas polyamides can take at most several days to cure. These provide a major discrepancy with the present specification. Reference ‘987 provides no description of types of liquid adhesives.
The Applicant discloses: “Applicant respectfully submits that the units of the curing time are irrelevant to a determination of whether claim 1 is definite. The Examiner states that the term "curing time" is "very broad." However, a claim encompassing broad subject matter does not cause a claim to be indefinite. See, e.g., MPEP §2173.02(I) ("A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. Instead, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear.")
Claim 1 is clearly directed to a method in which the production aid has a shorter curing time when compared to a curing time of the liquid adhesive used in the method. Such a limitation is understood by one of ordinary skill in the relevant art regardless of the unit of time of difference of the respective curing times of the production aid and the liquid adhesive. Accordingly, Applicant respectfully submits that claim 1 is definite, and by way of their dependence on claim 1, claims 2-8 are likewise definite.”
The Examiner respectfully traverses. The curing time is highly relevant to the claim. As previously disclosed, curing times vary greatly depending on the material used. Curing times range from minutes to hours to sometimes days. The specification does not disclose what this material (liquid adhesive) comprises. The Applicant cites MPEP §2173.02(I) ("A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined” (emphasis added). The Applicant has not clearly defined the scope.
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.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a liquid adhesive, does not reasonably provide enablement for a type of liquid adhesive. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
This is a scope of enablement rejection. One of ordinary skill in the art would have to engage in undue experimentation in order to make and use applicants claimed invention. See, In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Circ. 1988); see also, MPEP § 2164.01. MPEP 2164.01(a) sets forth the following factors, summarized from In re Wands, which should be considered when determining whether the claimed invention would require undue experimentation. The factors are as follows:
(A) the breadth of the claims; (B) the nature of the invention; (C) the state of the prior art; (D) the level of one of ordinary skill; (E) the level of predictability in the art; (F) the amount of direction provided by the inventor; (G) the existence of working examples; (H) and the quality of experimentation needed to make and use the invention based on the content of the disclose.
The factors are addressed in order. As to factor A, the claim broadly recites a liquid adhesive applied to a surface of the membrane material and/or on a surface of the electrode material. Further, a production aid applied onto a composite formed from the electrode material, membrane, and the uncured liquid adhesive and has a shorter curing time compared to the liquid adhesive. While the specification defines the production aid as a cyanate acrylate adhesive (paragraphs 0017-0021 of published specification), there is no defining of the liquid adhesive composition. This liquid adhesive could be at least a thousand different possible combinations. No specific examples of the workability of any other liquid adhesive are given. Therefore, this factor militates against a finding of enablement.
As to factors B and E, the field of material science is an unpredictable art. Thus, the formulation of compounds containing different elements from those that have been optimized experimentally may present different problems. In addition, the formulation of liquid adhesive materials requires different chemical formulations. It is not as simple as mixing each component into a beaker. As such one of ordinary skill in the art would not know what problems might arise when formulating an active material using the elements for which applicants have not presented experimental data to support. This factor militates against a finding of enablement.
As to factor C, the closest prior arts of record are vast being that the limitation of “a liquid adhesive” is itself a broad limitation. Further, the property of this liquid adhesive seemingly having a longer curing time than the production aid is also broad. As such, this factor militates against finding of enablement.
As to factor D, the level of ordinary skill in the art would be a person holding a bachelors degree in chemical engineering, material science, or chemistry. This factor does not weigh for or against a finding of enablement.
As to factors F and G, the applicant’s specification provides no examples of a liquid adhesive.
As to factor H, because of the unpredictability of the material science field, one of ordinary skill in the art would have to perform experimentation on each and every combination of the thousands possible. Such a degree of testing is undue experimentation. This factor militates against a finding of enablement.
Claims 2-9 are also rejected under 35 USC 112(a) for their dependence on claim 1.
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 1-9 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 discloses the production aid “has a shorter curing time compared to the liquid adhesive”. Not only does the specification not provide an example for what material comprises the liquid adhesive, but there is also no explanation for the units of this curing time. How much shorter is the curing time? Is this time in seconds, minutes, hours, etc.? The term itself is very broad especially when comparing one material which is defined (Paragraph 0021 discloses the production aid is a cyanate acrylate adhesive) vs another material which is not defined clearly (the liquid adhesive, see 112(a) rejection above.).
The Examiner has attached a supplemental reference from Aron Alpha which indicates cyanoacrylate has a curing time of 8-24 hours. However, there are liquid adhesives that have faster curing times. For example, also attached is a supplement reference from Chemix Guru, which discloses a hot melt adhesive EVA (ethylene vinyl acetate) which has a curing time 5-30 seconds.
Therefore, the Examiner requests the Applicant to clarify wherein the specification an explanation for the curing time is disclosed in addition to defining the type of liquid adhesive being that the curing time is an exclusive property between these two materials.
Claims 2-9 are also rejected under 35 USC 112(b) for their dependence on claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL S GATEWOOD whose telephone number is (571)270-7958. The examiner can normally be reached M-F 8:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ula Tavares-Crockett can be reached at 571-272-1481. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel S. Gatewood, Ph.D.
Primary Examiner
Art Unit 1729
/DANIEL S GATEWOOD, Ph. D/Primary Examiner, Art Unit 1729 September 30th, 2025