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 .
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.
Specification
The specification and drawings have been reviewed and no clear informalities or objections have been noted.
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) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okada (JP 2004311431A with references made to the machine translation attached herewith).
Regarding claim 1, Okada discloses a carbon-based calcined material (the porous carbon board mentioned in the abstract is the material and see lines 86-90 which disclose that this produced board is formed by carbonization/calcination/thermal treatment) of a mixture of an aromatic compound having a phenolic hydroxyl group (thermosetting resin, as taught in lines 86-90 and see lines 290-292 which disclose that the thermosetting resin is a phenol) and a carbon material having electrical conductivity (carbonaceous powder, see line 86-90 of the attached machine translation, and carbon has electrical conductivity) wherein the aromatic compound having a phenolic hydroxyl group is a monocyclic or fused polycyclic aromatic compound having at least one phenolic hydroxyl group (phenol is a monocyclic aromatic compound with a hydroxyl group and the produced novolak type resin, see lines 293-295 , is a polycyclic aromatic compound with multiple hydroxyl groups).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ryu (“Direct Insulation-to-Conduction Transformation of Adhesive Catecholamine for Simultaneous Increases of Electrical Conductivity and Mechanical Strength of CNT Fibers”, Adv. Mater. 2015, 3250-3255).
Regarding claim 1, Ryu discloses a carbon-based calcined material of a mixture of an aromatic compound having a phenolic hydroxyl group and a carbon material having electrical conductivity (see page 3251, right hand column which discloses a mixture of a carbon nanotube and a polydopamine (PDA)), wherein the aromatic compound having a phenolic hydroxyl group is a monocyclic or fused polycyclic aromatic compound having at least one phenolic hydroxyl group (PDA is a catecholamine polymer which exhibits a monocyclic aromatic compound having at least one phenolic hydroxyl group).
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Casanova (Carbon Black as Conductive Additive and Structural Director of Porous Carbon Gels, Materials 2020, 13, 217).
Regarding claim 1, Casanova discloses a carbon-based calcined material of a mixture of an aromatic compound having a phenolic hydroxyl group and a carbon material having electrical conductivity (see abstract which discloses a mixture of resorcinol and carbon black), wherein the aromatic compound having a phenolic hydroxyl group is a monocyclic or fused polycyclic aromatic compound having at least one phenolic hydroxyl group (resorcinol is a monocyclic aromatic ring with 2 hydroxyl groups).
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cui (CN109768280A with references made to the machine translation).
Regarding claim 1, Cui discloses a carbon-based calcined material (the “interface layer” mentioned in the abstract is the material and see lines 148-156 which disclose that this produced layer is formed by calcination/heat treatment under a vacuum) of a mixture of an aromatic compound having a phenolic hydroxyl group (phenol group, which is a phenolic hydroxyl group, as taught in lines 148-156) and a carbon material having electrical conductivity (acetylene black, for example, as explained in lines 148-150 which has electrical conductivity) wherein the aromatic compound having a phenolic hydroxyl group is a monocyclic or fused polycyclic aromatic compound having at least one phenolic hydroxyl group (phenol group, which is a phenolic hydroxyl group, as taught in lines 148-156 and the produced phenolic resin, see lines 503-505 , is a polycyclic aromatic compound with multiple hydroxyl groups).
Regarding claim 2, Cui further discloses the aromatic compound having a phenolic hydroxyl group is an aromatic compound having 2 to 6 phenolic hydroxyl groups (such as the phloroglucin of lines 368-375 which includes 3 phenolic-OH groups.
Regarding claim 3, Cui further discloses the carbon material having electrical conductivity is at least one kind selected from the group consisting of ketjen black, ketjen black EC, and carbon nanotube (see line 99 which teaches that the carbon material can be ketjen black).
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.
Claim(s) 15-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (JP 2004311431A with references made to the machine translation attached herewith) in view of Suzuki (US 2011/0076591).
Regarding claim 15, Okada teaches a calcined carbon material that is used for a gas diffusion layer in a fuel cell (see abstract). However, Okada does not teach a metal catalyst included in the composition.
Suzuki also discloses a fuel cell with a gas diffusion layer (see abstract).
Suzuki teaches inclusion of a catalyst, such as platinum, in the gas diffusion layer of the electrode in order to ensure that hazardous materials that may be produced in the fuel cell or fed into the fuel cell are oxidized (paragraphs 38-39).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to add the catalyst of Suzuki to the gas diffusion material of Okada in order to ensure that hazardous materials that may be produced in the fuel cell or fed into the fuel cell are oxidized.
Regarding claim 16, this claim does add any limitations that further define the claimed composition. The phrase “for use in a catalyst layer for a polymer electrolyte fuel cell” is considered an intended use and does not impose structure limitation on the composition. Accordingly, the subject matter of claim 16 is not patentably distinct from claim 15. See MPEP §2111.02.
Regarding claim 17, as modified above, modified Okada teaches a catalyst within the gas diffusion layer which can also be called a “catalyst layer”. In other words, the catalyst layer of modified Okada is the claimed catalyst layer.
Regarding claim 18, modified Okada further discloses a membrane electrode assembly comprising a polymer electrolyte membrane (as Nafion, as mentioned in line 430 of Okada), a gas diffusion layer (see lines 435-439 which discloses two gas diffusion layers for each side of the electrolyte) and the catalyst layer for a polymer electrolyte fuel cell according to claim 17 (modified Okada teaches the catalyst layer to oxidize harmful materials, as described above in claim 15).
Regarding claim 20, modified Okada further discloses a polymer electrolyte fuel cell comprising the membrane electrode assembly according to claim 18 (as described in claim 18 above, the structure of Okada is a PEM fuel cell).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (JP 2004311431A with references made to the machine translation attached herewith) in view of Suzuki (US 2011/0076591) in view of Gascoyne (US 2003/0012988).
Regarding claim 19, Okada teaches a polymer membrane in the fuel cell (such as the Nafion membrane described in lines 427-431), but is silent regarding the thickness of the membrane.
Gascoyne also discloses a PEM fuel cell (see abstract).
Gascoyne, like Okada, teaches a Nafion membrane that comprise a thickness of 100 microns or less (paragraph 25) and teaches that this thickness is preferable as it allows for the formation of voids within the membrane such that water can be retained within the voids and membrane hydrations issues can be avoided (paragraphs 19-20).
As such, it would have been obvious to one of ordinary skill in the art at the time of the invention to add the membrane thickness of Gascoyne to the membrane of modified Okada in order to provide a thickness that allows for the formation of voids within the membrane such that water can be retained within the voids and membrane hydrations issues can be avoided.
Allowable Subject Matter
Claims 7-9 and 14 are allowed.
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and resolving the outstanding rejections under 35 USC 112(b).
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Okada and Casanova, disclose a mixture of a phenolic hydroxyl group and a carbon material. However, the prior art neither teaches nor suggests such a material comprising the formula of claim 22 and, as claimed in claim 7, where the substituent of the calcined material forms a complex with a rare earth metal ion. Furthermore, the prior art neither teaches nor suggests either the material of claim 1 or the complex of claim 7 where the material or complex is (it is noted that these limitations are all simultaneously present in the claim as they are not claimed in the alternative):
at least one kind of electrolyte in a catalyst layer,
a catalyst carrier in the catalyst layer and
an electrolyte in a polymer electrolyte membrane, for a polymer fuel cell.
Relevant Prior Art
Liang (“Effect of the addition of carbon black and carbon nanotubes on the structure and oxidation resistance of pyrolyzed phenolic carbons” New Carbon Materials, 2012, 27(4): 283-287) – Discloses mixing a carbon nanotube and a phenolic hydroxyl group and then heating the mixture. However, Liang teaches a composition that is formed from pyrolysis of the mixture rather than calcination of the mixture, which means that the phenolic hydroxyl group is decomposed which is not the case in calcination.
US 2008/0044693 – discloses a fuel cell with catalyst layer adjacent to a carbon gas diffusion layer, but does not teach a composition that incorporates both the carbon material and the catalyst.
Response to Arguments
Applicant's arguments filed 2/26/2026 have been fully considered but they are not persuasive. On page 9, Applicant argues that Okada is not applicable to the current claims because Okada teaches a phenolic resin and Cui is not applicable to the instant claims because Cui teaches a polymer rather than a binder for the aromatic compound having a phenolic hydroxyl group. The Office respectfully disagrees with this argument as Applicant appears to be arguing limitations (non-resin, non-polymer) that are not claimed. 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., non-resin, non polymer compound) 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).
Furthermore, Applicant argues that Cui teaches a temperature far below a temperature sufficient for calcination. It is noted that Applicant’s claim is directed to a composition that comprises a phenolic hydroxyl group and a carbon material. The method of making the claimed composition does not further limit the claimed composition and Applicant has not presented any data or evidence stating that this calcination step changes the phenolic hydroxyl compound or the carbon material. In fact, Applicant even goes so far, in the specification, to state that the calcination does NOT decompose the phenolic hydroxyl, meaning it does not change its composition (see paragraph 87 of the instant published application). As such, Applicant’s arguments are not persuasive as Applicant is arguing the method of making the claimed composition, rather than the claimed composition.
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 MATTHEW J MERKLING whose telephone number is (571)272-9813. The examiner can normally be reached Monday - Thursday 8am-6pm.
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/MATTHEW J MERKLING/Primary Examiner, Art Unit 1725