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
The amendment filed 30 January 2026 has been entered.
Applicant’s amendments to the Specification and Abstract have overcome every Drawing and Specification objection. The Drawing and Specification objections have been withdrawn.
Applicant’s amendments to the Claims have overcome the Claim objections. The Claim objections have been withdrawn.
Applicant’s arguments filed 30 January 2026 regarding the 35 USC 112(a) rejections for claims 1 and 11 have been fully considered but are not persuasive. Accordingly, grounds for full-scope-of-enablement rejections are still present in claims 1 and 11. However, Applicant’s arguments and amendments to claims 5 and 15 regarding the 35 USC 112(a) rejections have been fully considered and are persuasive. Accordingly, the previous 35 USC 112(a) rejections specific to claims 5 and 15 have been removed in the present Office action.
Applicant’s arguments filed 30 January 2026 regarding the 35 USC 112(b) rejections for claims 1 and 11 have been fully considered. Applicant’s arguments regarding the “in particular” rejection are persuasive. However, the Applicant’s arguments regarding the “internal stresses” rejection are not persuasive. As a result, the grounds of rejection under 35 USC 112(b) still stand.
Applicant’s arguments, filed 30 January 2026, with respect to the rejection of claim 1 under 35 USC 103 have been fully considered but are not persuasive. Therefore, the grounds of rejection under 35 USC 103 still stand.
Status of the Claims
In the amendment dated 30 January 2026, the status of the claims is as follows: Claims 1, 3-11, and 13-19 have been amended. Claims 2 and 12 have been cancelled. Claims 20-21 are new.
Claims 1, 3-11, and 13-21 are pending.
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, 3-11, 13-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for claims 1 and 11. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
Each of the claims require “mechanically introducing internal stresses into at least one of the two planar components.” The Specification describes these “internal stresses” as results that come to take place after certain method steps are executed. However, instead of claiming the specific method steps that produce these stresses, the claims broadly require “mechanically introducing internal stresses.” While the Specification is enabling for the method steps disclosed in the Specification, the Specification is not enabling for all the possible method steps, which are included within the scope of the claims for mechanically producing the internal stresses. Thus, although breadth in claims is not a cause for indefiniteness, when the claim language is overly broad, which is the case for the current set of claims, then this claim language causes the claims to have a scope of protection beyond that which is justified by the Specification.
The specific factors that were considered by the examiner were the “breadth of the claims” and the “existence of working examples.”
Claims 1 and 11 recite “mechanically introducing internal stresses.”
Breadth of the claims: This scope of the claims encompasses all mechanical methods that can cause internal stresses in the planar components.
Working examples: The Specification only provides examples of mechanical stresses (embossing, rolling, spinning, and hot embossing in paragraph 0023). The Specification does not provide any examples for all the possible mechanical method steps that can cause internal stresses in the planar components such as clamping the planar components or using a vacuum source to apply pressure to the planar components.
These rejections can be overcome by reciting the method steps (the embossing, rolling, spinning, or hot embossing in paragraph 0023) that are described in the Specification for producing the claimed “internal stresses.” Claims 3-10 and 13-21 are rejected based on their dependence to the independent claims.
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, 3-11, 13-21 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.
Claims 1 and 11 recite “introducing internal stresses into at least one of the two planar components.” It is unclear when “internal stresses” occur or when “internal stresses” do not occur within the planar component. For example, if the temperature of the component were to change, then this change in temperature should theoretically cause the molecular structure inside the component to move at a faster speed due to the heating. Thus, this change in temperature would result in an “internal stress.” Or, if someone were to place a weight on the component, then presumably there would be an internal stress due to the force from the weight. However, in either of these cases, because the stresses are internal, how would one of ordinary skill in the art know if there were in fact “internal stresses” in the planar components? In other words, the scope of the limitation is unclear because the stresses are “internal” to the component, and one of ordinary skill in the art could not know whether or not they were infringing on the limitation.
Claims 3-10 and 13-21 are rejected based on their dependency to the independent claims.
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.
Claims 1, 3, 6-8, 10-11, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okabe et al. (US-20160104902-A1).
Regarding claim 1, Okabe teaches a method (title) for producing a bipolar plate (fig. 2; has an anode side ad a cathode side as well as a shield pate 45, para 0033, used to produce a fuel cell, fig. 3; the power generation unit 20 is construed as a bipolar plate), comprising the following steps:
providing two planar components (sheet 210, fig. 6, which becomes body flow path 40, fig. 2, and shield plate 45, fig. 2; construed as each being planar components),
mechanically introducing internal stresses (steps P520 and P530, fig. 4) into at least one of the two planar components (the sheet 210 is rolled by rollers 340, fig. 6; para 0023 of the Specification in the Instant Application discloses that “rolling” causes “internal stresses;” construed such that the rolling of the sheet 210 taught by Okabe in fig. 6 results in internal stresses prior to the welding taught by Okabe in fig. 17; fig. 4), and
after mechanically introducing the internal stresses (step P560 takes place after steps P520 and P530, fig. 4), integrally bonding the two planar components (body flow path 40 is welded to shield plate 45, fig. 17; paras 0060-0061), in a joining plane (plane on top of shield plate 45, fig. 16; construed as having a depth, which is shown in fig. 14).
Okabe, figs. 6 and 17
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Regarding claim 3, Okabe teaches wherein, during integrally bonding (body flow path 40 is welded to shield plate 45, fig. 17; paras 0060-0061), at least one of the two planar components deforms toward the joining plane (“second inclined portion 412 is deformed by the pressing force until it contacts the shield plate 45,” para 0061).
Regarding claim 6, Okabe teaches wherein, when integrally bonding (fig. 17), a part (portion 412, figs. 16-17) of at least one of the two planar components moves toward the joining plane (top surface of plate 45, fig. 17).
Regarding claim 7, Okabe teaches wherein at least one of the two planar components (body flow 40, fig. 17) comprises geometry elements (parts 450, fig. 11) with a direction component (mesh 470 inserts into gap that is inside the parts 450, figs. 3 and 11, para 0037) perpendicular to a surface (flat portion 415, figs. 3 and 11) of the respective planar component.
Regarding claim 8, Okabe teaches wherein the two planar components are sheets (sheet 210, fig. 6, and shield plate 45, fig. 2; shield plate 45 is construed as sheet, fig. 14).
Regarding claim 10, Okabe teaches a method for producing a fuel cell (fuel cell 100, fig. 1), the method comprising producing the bipolar plate according to the method of claim 1 (please see claim 1 above).
Regarding claim 11, Okabe teaches a method (title) for producing a bipolar plate (fig. 2; has an anode side ad a cathode side as well as a shield pate 45, para 0033, used to produce a fuel cell, fig. 3; the power generation unit 20 is construed as a bipolar plate), the method comprising the following steps:
providing two planar components (sheet 210, fig. 6, which becomes body flow path 40, fig. 2, and shield plate 45, fig. 2; construed as each being planar components) in a stacked manner (the flow path 40 is stacked with the shield plate 45, fig. 2),
mechanically introducing internal stresses (steps P520 and P530, fig. 4) into at least one of the two planar components (the sheet 210 is rolled by rollers 340, fig. 6; para 0023 of the Specification in the Instant Application discloses that “rolling” causes “internal stresses;” construed such that the rolling of the sheet 210 taught by Okabe in fig. 6 results in internal stresses prior to the welding taught by Okabe in fig. 17; fig. 4), and
after mechanically introducing the internal stresses (step P560 takes place after steps P520 and P530, fig. 4), integrally bonding the two planar components, by welding (body flow path 40 is welded to shield plate 45, fig. 17; paras 0060-0061), in a joining plane (plane on top of shield plate 45, fig. 16; construed as having a depth, which is shown in fig. 14).
Regarding claim 13, Okabe teaches wherein, during integrally bonding (body flow path 40 is welded to shield plate 45, fig. 17; paras 0060-0061), at least one of the two planar components deforms toward the joining plane (“second inclined portion 412 is deformed by the pressing force until it contacts the shield plate 45,” para 0061).
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.
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.
Claims 4, 14, and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (US-20160104902-A1) as applied to claims 1 and 11-13 above and further in view of Kimura et al. (US-20100021628-A1).
Regarding claim 4, Okabe teaches the invention as described above but does not explicitly disclose wherein the internal stresses include tensile stresses.
However, in the same field of endeavor of fuel cell manufacturing, Kimura teaches wherein the internal stresses (“assembly may be curved such that its surface where the electrolyte membrane is formed is concavely curved,” para 0012; construed such that the compressive stress taught by Kimura is applied before the welding taught by Okabe during the press forming step P530), include tensile stresses (compressive stress C, fig. 5B; para 0049).
Kimura, fig. 5B
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Kimura, by applying a compressive stress C, as taught by Kimura, to the shield plate 45 prior to the body flow 40 being welded to the plate 45 during the press forming, as taught by Okabe, in order to produce a concave surface, for the advantage of reducing the opposing tensile stress in the electrolyte membrane and hence the possibility of damage to the electrolyte membrane (Kimura, para 0013).
Regarding claim 14, Okabe teaches the invention as described above but does not explicitly disclose wherein the internal stresses include tensile stresses.
However, in the same field of endeavor of fuel cell manufacturing, Kimura teaches wherein the internal stresses (“assembly may be curved such that its surface where the electrolyte membrane is formed is concavely curved,” para 0012; construed such that the compressive stress taught by Kimura is applied before the welding taught by Okabe during the press forming step P530), include tensile stresses (compressive stress C, fig. 5B; para 0049).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Kimura, by applying a compressive stress C, as taught by Kimura, to the shield plate 45 prior to the body flow 40 being welded to the plate 45 during the press forming, as taught by Okabe, in order to produce a concave surface in the electrolyte membrane, for the advantage of reducing the opposing tensile stress in the electrolyte membrane and hence the possibility of damage to the electrolyte membrane (Kimura, para 0013).
Regarding claim 20, Okabe teaches the invention as described above but does not explicitly disclose wherein the internal stresses are opposite to stresses caused by the integral bonding.
However, in the same field of endeavor of fuel cell manufacturing, Kimura teaches wherein the internal stresses (compressive stress C compresses inwards, fig. 5B; para 0049) are opposite to stresses caused by the integral bonding (stress T1 expand outwards, fig. 2B; T1 is opposite to C; T1 stress forms when “the temperature reaches about 600° C,” para 0036; construed as stress that results from the high temperature caused by welding).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Kimura, by applying a compressive stress C, as taught by Kimura, to the shield plate 45 prior to the body flow 40 being welded to the plate 45 during the press forming, as taught by Okabe, in order to compensate for the expansion forces T1, as taught by Kimura, that occur during the spot welding, as taught by Okabe, because if such internal stresses become larger than the strength of the electrolyte membrane, the electrolyte membrane may crack, causing a short-circuiting between the electrodes (Kimura, para 0006).
Regarding claim 21, Okabe teaches the invention as described above but does not explicitly disclose wherein the internal stresses are opposite to stresses caused by the integral bonding.
However, in the same field of endeavor of fuel cell manufacturing, Kimura teaches wherein the internal stresses (compressive stress C compresses inwards, fig. 5B; para 0049) are opposite to stresses caused by the integral bonding (stress T1 expand outwards, fig. 2B; T1 is opposite to C; T1 stress forms when “the temperature reaches about 600° C,” para 0036; construed as stress that results from the high temperature caused by welding).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Kimura, by applying a compressive stress C, as taught by Kimura, to the shield plate 45 prior to the body flow 40 being welded to the plate 45 during the press forming, as taught by Okabe, in order to compensate for the expansion forces T1, as taught by Kimura, that occur during the spot welding, as taught by Okabe, because if such internal stresses become larger than the strength of the electrolyte membrane, the electrolyte membrane may crack, causing a short-circuiting between the electrodes (Kimura, para 0006).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (US-20160104902-A1) as applied to claim 1 above and further in view of Wilkosz et al. (US-20160368078-A1).
Okabe teaches the invention as described above but does not explicitly disclose further comprising, prior to integrally bonding, heating the at least one of the two planar components.
However, in the same field of endeavor of fuel cell manufacturing, Wilkosz teaches further comprising, prior to integrally bonding (“continuous line welding,” para 0029; fig. 5), heating the at least one of the two planar components (apertures 20 from “burst spot welds” using a laser beam, para 0027; fig. 3; construed such that the laser beam provides heating during the burst spot welds).
Wilkosz, fig. 5
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Wilkosz, by applying burst spot welds and by using the welding fixture assembly 14, as taught by Wilkosz, when welding the body flow 40 to the plate 45, as taught by Okabe, in order to use interim spot welds prior completing the weld using continuous line welding, for the advantage of maintaining alignment of the workpieces by using the spot welds, which minimize the heat flux experienced by the workpieces (Wilkosz, paras 0003-0004; fig. 14 of Okabe shows a plan view of body 40 and plate 45).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (US-20160104902-A1) as applied to claim 1 above and further in view of Bossel et al. (US-5338621-A).
Okabe teaches wherein the planar component each has a thickness of not more than 0.1 mm (“the thickness which is adopted in order to reduce the deformation of the shield plate 45 is 0.1 mm,” para 0077).
Okabe does not explicitly disclose wherein the two planar components each have a thickness of not more than 0.1 mm (Okabe does not explicitly disclose a thickness for the sheet 210).
However, in the same field of endeavor of fuel cell manufacturing, Bossel teaches wherein the two planar components each have a thickness of not more than 0.1 mm (“gastight separating plate 6 designed as a hollow body produced from two half-shell sheet metal bodies having a thickness of 0.1 mm,” column 7, lines 28-29).
Bossel, fig. 1
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Bossel, by using a thickness of 0.1 mm, as taught by Bossel, for the sheet 210, as taught by Okabe, in order to use metal bodies that can form a gastight separating plate through welding according to a standard composition, in order to flow the gas along the surface of the separating plate, which makes it possible to carry out endothermal chemical conversion reactions within the fuel electrodes (Bossel, column 2, lines 47-54 and column 7, lines 27-34).
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (US-20160104902-A1) in view of Kimura et al. (US-20100021628-A1) as applied to claims 11-14 above and further in view of Wilkosz et al. (US-20160368078-A1).
Regarding claim 15, Okabe teaches the invention as described above but does not explicitly disclose further comprising, prior to integrally bonding, heating at least one of the two planar components.
However, in the same field of endeavor of fuel cell manufacturing, Wilkosz teaches further comprising, prior to integrally bonding (“continuous line welding,” para 0029; fig. 5), heating at least one of the two planar components (apertures 20 from “burst spot welds” using a laser beam, para 0027; fig. 3; construed such that the laser beam provides heating during the burst spot welds).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Wilkosz, by applying burst spot welds and by using the welding fixture assembly 14, as taught by Wilkosz, when welding the body flow 40 to the plate 45, as taught by Okabe, in order to use interim spot welds prior completing the weld using continuous line welding, for the advantage of maintaining alignment of the workpieces by using the spot welds, which minimize the heat flux experienced by the workpieces (Wilkosz, paras 0003-0004; fig. 14 of Okabe shows a plan view of body 40 and plate 45).
Regarding claim 16, Okabe teaches wherein, when integrally bonding (fig. 17), a part (portion 412, figs. 16-17) of at least one of the two planar components moves toward the joining plane (top surface of plate 45, fig. 17).
Regarding claim 17, Okabe teaches wherein at least one of the two planar components (body flow 40, fig. 17) comprises geometry elements (parts 450, fig. 11) with a direction component (mesh 470 inserts into gap that is inside the parts 450, figs. 3 and 11, para 0037) perpendicular to a surface (flat portion 415, figs. 3 and 11) of the respective planar component.
Regarding claim 18, Okabe teaches wherein one of the two planar components (sheet 210, fig. 6, which becomes body flow path 40, fig. 2, and shield plate 45, fig. 2) is an anode sheet (shield plate 45 is on the side of the anode separator 73, fig. 2; construed as an anode sheet) or a cathode sheet (body flow 4 is on the side of the cathode separator 71, fig. 2; construed as a cathode sheet).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (US-20160104902-A1) in view of Kimura et al. (US-20100021628-A1) and Wilkosz et al. (US-20160368078-A1) as applied to claims 11-18 above and further in view of Bossel et al. (US-5338621-A).
Okabe teaches wherein the planar component each has a thickness of not more than 0.1 mm (“the thickness which is adopted in order to reduce the deformation of the shield plate 45 is 0.1 mm,” para 0077).
Okabe does not explicitly disclose wherein the two planar components each have a thickness of not more than 0.1 mm (Okabe does not explicitly disclose a thickness for the sheet 210).
However, in the same field of endeavor of fuel cell manufacturing, Bossel teaches that the two planar components each have a thickness of not more than 0.1 mm (“gastight separating plate 6 designed as a hollow body produced from two half-shell sheet metal bodies having a thickness of 0.1 mm,” column 7, lines 28-29).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to modify the invention of Okabe, in view of the teachings of Bossel, by using a thickness of 0.1 mm, as taught by Bossel, for the sheet 210, as taught by Okabe, in order to use metal bodies that can form a gastight separating plate through welding according to a standard composition, in order to flow the gas along the surface of the separating plate, which makes it possible to carry out endothermal chemical conversion reactions within the fuel electrodes (Bossel, column 2, lines 47-54 and column 7, lines 27-34).
Response to Argument
Applicant's arguments filed 30 January 2026 have been fully considered but they are not persuasive.
Claim Rejections Under 35 USC § 112(a)
Claims 1 and 11
In the Office action above, the examiner has rejected claims 1, 3-11, and 13-21 for lack of enablement because the specification is enabling for the full scope of claims 1 and 11. Page 8 of the arguments references excerpts from the Amgen decision in MPEP 2164.01, where it was found that “the specification does not always need to describe with particularity how to make and use every single embodiment within a claimed class.”
The examiner agrees that the Amgen decision is relevant to the enablement rejection; however, respectfully submit that the Amgen decision supports the examiner’s position and not the Applicant’s. As described in the next two sentences from MPEP 2164.01: “[i]f a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class…The more one claims, the more one must enable.” In Amgen, a company was claiming an entire genus of antibodies, but the Specification was only enabling for 26 specific amino-acid sequences of antibodies. Similarly, in the Instant Application, the Applicant is claiming the entire genus of methods for “mechanically introducing internal stress” in claim 1. However, the Specification is only enabling for “embossing, rolling, spinning, and/or hot embossing.” As noted in the rejection above, two methods that are within the scope of the claim, which are not covered by the Specification, are using a clamping mechanism or using vacuum pressure to apply “mechanically introducing internal stress.” Using the rationale from the Amgen decision then, the Specification is not enabling for a person skilled in the art to use a clamping mechanism or vacuum pressure. As noted above, the Specification only mentions embossing, rolling, spinning, and/or hot embossing. Thus, it follows that based on the Amgen decision, the Specification is not enabling for the entire class of “mechanically introducing internal stress” that is being claimed.
Pages 8-9 of the arguments reference three different Wands factors as to why the Specification is enabling. The first Wands factor that is addressed is “predictability of the art.” The arguments reference a section of the MPEP, where it states that in contrast to mechanical or electrical elements, which involve predictable factors, chemical reactions and physiological activities are unpredictable. Therefore, the arguments suggest that mechanical-related inventions are predictable and thus fully enabled.
The examiner submits that if this argument is correct, then by inference, the full scope of all mechanical inventions that are claimed are fully enabled for those of ordinary skill in the art. However, MPEP 2164.06.a.I lists several mechanical devices/processes, where it was determined that the full scope was not enabled. Thus, based on this contradiction, the argument that all mechanical-related inventions are fully enabled because they are predictable cannot be true.
The examiner submits that what is important in considering the “predictability of the art” Wands factor is whether “one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains.” In other words, what is important to consider in this Wands factor is the cause-and-effect relationships. This section of the MPEP informs that this cause and effect does not need to be described fully because one of ordinary skill readily understands this relationship.
With respect to the instant application, there is sufficient disclosure for the “effect” side of this relationship—the internal stresses are described sufficiently in the Specification. However, there is insufficient disclosure for the “cause” side of this relationship. The Specification simply states the following regarding the cause for “internal stresses,” which are “mechanically introduced:”
“The internal stresses, which are thus already present, prior to integrally bonding, in at least one of the two planar components, are preferably mechanically introduced. Further preferably, the internal stresses are introduced by embossing, rolling, spinning, and/or hot embossing.”
The Specification does not describe how these mechanical forces that are claimed bring about “internal stresses.” Further, there is no disclosure in the Specification of any equipment or processes that should be used. There is also no disclosure of any measuring devices or sensors that can be used to determine whether “internal stresses” are present. As a result, the Specification is not fully enabled for the breadth of the scope of the claims, which include all the forces that can be used for “mechanically introducing internal stress.”
The examiner submits that those of ordinary skill in the art readily understand mechanical forces for embossing, rolling, spinning, and hot embossing and how these forces can bring about internal stresses in objects. For example, if the Applicant were to amend claim 1 to recite “mechanically introducing through embossing, rolling, spinning, or hot embossing into at least one of the two planar components,” then this amendment would overcome the enablement rejection for claim 1.
Page 9 of the arguments refers to two other Wands factors—the “Amount of direction provided in the specification” and “working examples.” Respectfully submit that these factors were considered under the “Working examples” sections in the 35 USC 112(a) enablement rejections above. The examiner agrees with the Applicant that the Specification discloses examples using “embossing, rolling, spinning, and/or hot embossing.” As noted in the rejection above, the Applicant can overcome this rejection by claiming these methods in the claim.
Claims 5 and 15
The examiner was persuaded by the Applicant’s arguments regarding claims 5 and 15. The reason why these arguments were found to persuasive and the previous arguments were not found to be persuasive is because those of ordinary skill in the art readily understand how different heating devices can be substituted to conduct heating of the components to certain temperatures. For example, although the Specification discloses an example of using a laser beam for conducting the heating, one of ordinary skill in the art would be able to substitute a furnace for a laser in order to heat the components. The examiner submits that there is a finite number of methods that can be done to accomplish the claimed “heating.” The Specification of the Instant Application also sufficiently describes how a laser beam is used to heat the component (fig. 5), such that one of ordinary skill in the art can understand how to accomplish the claimed “heating.”
In contrast, claims 1 and 11 claim a broad genus of forces for “mechanically introducing the internal stresses.” In other words, while the claim scope for claims 5 and 15 is broad, which is permitted, the claim scope for claims 1 and 11 is overly broad, raising issues as to whether the claim scope if fully enabled. Because the Specification only provides a token description of the limitation in claims 1 and 11 (especially in comparison the description corresponding with claims 5 and 15), the Specification is not enabling for the full scope of claims 1 and 11 for those of ordinary skill in the art.
Claim Rejections Under 35 USC § 112(b)
The examiner agrees with the Applicant’s comments on page 10 that the 112(b) rejection for “in particular” was removed in the claims filed on 19 December 2022. This rejection should not have been made. As a result, this rejection has been removed in the present Office action.
Pages 10-11 respond to a 112(b) rejection for claims 1 and 11. This rejection was based on the metes and bound of the “internal stresses.” The examiner’s position is that this limitation is indefinite because the stresses are internal and one ordinary skill would not know if the stresses are present or not. In response, the Applicant refers to paragraph 0020 of the publication, which describes how one of ordinary skill art would recognize if internal stresses were present based on whether the stresses were “mechanically and selectively introduced” and “stable over time.”
The examiner did not find this argument persuasive because regardless of whether the stress are “mechanically and selectively introduced” and “stable over time,” the stresses are still “internal.” If the stresses are internal, then how would one of ordinary skill in the art know if stresses are “selectively introduced” and whether they become “stable over time?” In other words, because the stresses are internal and invisible to an external observer, this limitation is ambiguous and indefinite. There should be an outward sign of the “internal stresses” in order for one of ordinary of ordinary skill to know if they were infringing on this limitation.
Claim Rejections Under 35 USC § 102 and 103
Independent Claim 1
Page 11 of the arguments reference Okabe (US20160104902) and the rejection for claim 1. Okabe teaches using rollers 340 to roll a sheet 210. Okabe is used to teach the limitation “mechanically introducing internal stresses.” As explained in the rejection, Okabe was used for this limitation because the Specification discloses that “internal stresses are introduced by embossing, rolling, spinning, and/or hot embossing.” In their response, the Applicant states that Okabe fails to teach this limitation because “the rollers only feed and convey the raw material. Merely feeding and conveying material would not introduce internal stresses into the material.”
The examiner did not find this explanation persuasive because the Specification discloses that “internal stresses are introduced by … rolling.” The Specification does not place any qualifiers on the rolling. For example, the Specification does not state “internal stresses are introduced by … rolling except by feeding or conveying…”
Furthermore, based on the definition provided in the 112(b) section, Okabe would appear to teach this limitation. The definition that was provided was that internal stresses are present if the stresses are “mechanically and selectively introduced” and “stable over time.” Okabe teaches that the rolling is introduced selectively and mechanically in figs. 6-11 and in paragraph 0042. This rolling eventually results in the transformation of a sheet 210 into a body flow path 40, which becomes stable over time, such that it is eventually welded and results in hardly any deformation (paragraph 0064 of Okabe). The Specification of the Instant Application discloses that this is what is meant in stresses that become stable over time, i.e., stresses that “do not cause any material displacement and/or deformation without external influence.”
For the above reasons, rejections to the pending claims are respectfully sustained by the examiner.
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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/ERWIN J WUNDERLICH/Examiner, Art Unit 3761 4/10/2026
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