DETAILED ACTION
The communication dated 1/2/2026 has been considered and entered. Claims 1-15, and 20 are cancelled. Claims 24, 29, and 30 are amended. Claims 16-19, and 21-30 are pending.
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 Arguments
Applicant argues that prior art , LEE and ROSSETT, do not teach the limitation of “in which at least one watermark is made, where the watermark forms a patterning for the flow field of the gas diffusion layer produced from the green paper.”
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive.
LEE teaches a carbon paper substrate for use in a gas diffusion layer of a fuel cell [abstract]. The carbon paper includes a preweb [0061]. This teaches the limitation of “A green paper for producing a gas diffusion layer (GDL) for a fuel cell, wherein the green paper has at least one first paper web”. LEE does not teach the use of a watermark. ROSSET teaches a similar cellulose paper [0058]. ROSSET also teaches the formation of a watermark on the cellulose substrate where the watermark forms a pattern [0115] with thickness variation [0114]. ROSSET also teaches that the watermarks of the invention advantageously leave the sheet essentially flat [0103] despite the new pattern indentions. This would allow for easier flow across the sheet.
The examiner notes the ROSSETT embossment forms a pattern as claimed and channel on a flat surface would encourage flow along the channel as opposed to the essentially flat surface. This in combination teaches the instant limitation of “in which at least one watermark is made, where the watermark forms a patterning for the flow field of the gas diffusion layer produced from the green paper”.
Applicant argues that prior art does not give reasoning for combination given that ROSSET comes from a distinctly different field of endeavor.
Applicant's arguments filed 1/2/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, ROSSET teaches a similar cellulose paper [0058]. ROSSET also teaches the formation of a watermark on the cellulose substrate where the watermark forms a pattern [0115] with thickness variation [0114]. ROSSET also teaches that the watermarks of the invention advantageously leave the sheet essentially flat [0103] despite the new pattern indentions. This would allow for easier flow across the sheet by way of encouraging flow through the embossed channel as opposed to the essentially flat surface.
In response to applicant's argument that ROSSETT is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both art are directed to the formation of a cellulose sheet. The end use of the sheet does not negate the similar formation method.
Applicant argues that instant invention comes to unconventional discovery not present in LEE or ROSSETT.
In response to applicant's argument that patterned green paper by patterned papermaking is not contemplated by prior art, 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).
Applicant argues that amended claims 24, 29 and 30 overcome prior 112(b) rejection.
Applicant’s arguments, see REMARKS, filed 1/2/2026, with respect to 112(b) rejections have been fully considered and are persuasive. The 112(b) rejection of claims 24, 29, and 30 has been withdrawn.
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.
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.
Claims 16-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over LEE (US 20140011118 A1) in view of ROSSET (US 20110056638 A1).
For claim 16, LEE teaches a carbon paper substrate for use in a gas diffusion layer of a fuel cell [abstract]. The carbon paper includes a preweb [0061]. This teaches the limitation of “A green paper for producing a gas diffusion layer (GDL) for a fuel cell, wherein the green paper has at least one first paper web”. LEE does not teach the use of a watermark. ROSSET teaches a similar cellulose paper [0058]. ROSSET also teaches the formation of a watermark on the cellulose substrate where the watermark forms a pattern [0115] with thickness variation [0114]. ROSSET also teaches that the watermarks of the invention advantageously leave the sheet essentially flat [0103] despite the new pattern indentions. This would allow for easier flow across the sheet. The examiner notes the ROSSETT embossment forms a pattern as claimed and channel on a flat surface would encourage flow along the channel as opposed to the essentially flat surface. This teaches the limitation of “which at least one watermark is made, where the watermark forms a patterning for the flow field of the gas diffusion layer produced from the green paper”. It would be obvious to one skilled in the arts at the time of invention to substitute the watermark of ROSSET into the structure of LEE to produce a flat watermarked sheet. One would be motivated to combine the art based on the added benefit of an essentially flat sheet, despite the new pattern indentions, as taught by ROSSET. This would allow for easier flow across the sheet by way of encouraging flow through the embossed channel as opposed to the essentially flat surface.
For claim 17, LEE and ROSSET teach the green paper according to claim 16, as above. ROSSET teaches the formation of a watermark on the cellulose substrate where the watermark forms a pattern [0115] with thickness variation [0114]. ROSSET makes no mention of density variance. The examiner understands only thickness is variable. This teaches the limitation of “wherein the watermark is a true watermark, in which the thickness of the paper varies but the density of the paper does not vary, and/or in that the watermark is a false watermark, in which the thickness of the paper is reduced but at the same time the density of the paper is increased”.
For claim 18, LEE and ROSSET teach the green paper according to claim 16, as above. LEE teaches the paper has multiple plies (webs) [0087]. This teaches the limitation of “wherein the green paper has a first paper web and at least one second paper web”.
For claim 19, LEE and ROSSET teach the green paper according to claim 16, as above. ROSSET teaches the watermark is formed by a place of reduced thickness [0080]. ROSSET also teaches the use of embossment to create cavities (channels) [0091]. This teaches the limitation of “wherein the watermark is configured as a recess in the form of at least one channel”.
For claim 21, LEE and ROSSET teach the green paper according to claim 16, as above. ROSSET teaches watermark regions can be juxtaposed with one another by overlaying watermarks (on different layers) [0052]. This teaches the limitation of “wherein the patterns of the watermark of the anode side and of the cathode side of the fuel cell are not identical but are instead exactly mirror-symmetrical in the area and in the material-thickness direction”.
Claims 22-26, 28, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over LEE (US 20140011118 A1) and ROSSET (US 20110056638 A1) in view of ICHIKAWA (US 20180366736 A1).
For claim 22, LEE teaches a process to make a carbon paper substrate for use in a gas diffusion layer of a fuel cell [abstract]. The carbon paper includes a preweb [0061]. This teaches the limitation of “A process for producing a green paper for producing a gas diffusion layer (GDL) for a fuel cell, wherein at least one first paper web”. LEE teaches that carbon powder is added to the furnish to improve electrical conductivity [0059]. LEE does not teach the mixing of metal powder. ICHIKAWA also teaches the production of an electroconductive sheet with carbon fiber [abstract] used in a fuel cell similar to LEE [0025]. ICHIKAWA also teaches the sheet contains metal fiber as a substitution for carbon fibers [0068]. This teaches the limitation of “admixed with metal powder and/or metal fibers, is generated,”. It would be obvious to one skilled in the arts at the time of invention to substitute the metal fiber of ICHIKAWA into the structure of LEE to produce a conductive sheet. One would be motivated to combine the art based on the essential substitution of carbon and metal as taught by ICHIKAWA.
LEE does not teach the formation of a watermark. ROSSET teaches a similar cellulose paper [0058]. ROSSET also teaches the formation of a watermark on the cellulose substrate where the watermark forms a pattern [0115] with thickness variation [0114]. ROSSET also teaches that the watermarks of the invention advantageously leave the sheet essentially flat [0103]. This teaches the limitation of “with at least one watermark being made in the paper web, in order to form a patterning for the flow field of the gas diffusion layer produced from the green paper”. It would be obvious to one skilled in the arts at the time of invention to substitute the watermark of ROSSET into the structure of LEE to produce a flat watermarked sheet. One would be motivated to combine the art based on the added benefit of an essentially flat sheet as taught by ROSSET.
For claim 23, LEE, ICHIKAWA and ROSSET teach the process according to claim 22, as above. ROSSET teaches the formation of a watermark on the cellulose substrate where the watermark forms a pattern [0115] with thickness variation [0114]. ROSSET makes no mention of density variance. The examiner understands only thickness is variable. This teaches the limitation of “wherein the watermark is formed by a true watermark, in which the thickness of the paper varies but the density of the paper does not vary, and/or in that the watermark is formed by a false watermark, in which the thickness of the paper is reduced but at the same time the density of the paper is increased”.
For claim 24, LEE, ICHIKAWA and ROSSET teach the process according to claim 22, as above. LEE teaches a wet-laid process where different furnishes with different fiber lengths are laid on top of one another making distinct layers [0062 and Fig 8B]. This teaches the limitation of “wherein the at least one first paper web is formed, and a second paper web is formed, the second paper web in a still-wet state being brought together with and firmly joined to the at least one first paper web, where the at least one first paper web and the second paper web together form a green paper for the GDL”.
For claim 25, LEE, ICHIKAWA and ROSSET teach the process according to claim 24, as above. LEE teaches the paper is formed using a fourdrinier [0062]. LEE does not use a cylinder former. ROSSET also teaches the use of Fourdrinier to produce the sheets [0034]. ROSSET also teaches the use of a cylinder to form the sheet [Fig 1]. This teaches the limitation of “wherein the first and/or second paper web is generated in a cylindrical paper machine”. It would be obvious to one skilled in the arts at the time of invention to substitute the cylinder former of ROSSET into the process of LEE to produce a flat conductive sheet. One would be motivated to combine the art based on the essential substitution of the two formers in the process as taught by ROSSET.
For claim 26, LEE, ICHIKAWA and ROSSET teach the process according to claim 24, as above. ROSSET teaches the use of a short former [0034] that is cylindrical [Fig 1]. This teaches the limitation of “wherein the first and/or second paper web is generated in a short former wherein the paper stock is applied via nozzle to a cylindrical wire”.
For claim 28, LEE, ICHIKAWA and ROSSET teach the process according to claim 24, as above. LEE teaches that the shorter fiber (finer) with lower flowability are laid on the wire first [0062]. LEE further teaches the larger fibers applied on the air side (on top) [0062]. This first fine layer is applied first before the longer web (less fine). This teaches the limitation of “wherein the first paper web is formed by a finer paper stock slurry than the second paper web”.
For claim 29, LEE, ICHIKAWA and ROSSET teach the process according to claim 24, as above. LEE teaches one side of the membrane is used to house the platinum catalyst [0129]. This teaches the limitation of “wherein the first paper web forms a diffusion layer for a membrane coated with catalytic metal in the gas diffusion layer produced from the green paper”. LEE also teaches that the porous membrane web side acts as a flow channel (flow field) [0148]. The examiner understands that sides of the membrane can be interchangeable as first or second. This teaches the limitation of “and the second paper web forms a distribution layer with flow field in the gas diffusion layer produced from the green paper”.
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over LEE (US 20140011118 A1) ROSSET (US 20110056638 A1), and ICHIKAWA (US 20180366736 A1), in view FUKUDA (US 4818640).
For claim 27, LEE, ICHIKAWA and ROSSET teach the process according to claim 24, as above. LEE teaches that the shorter fiber (finer) with lower flowability are laid on the wire first [0062]. LEE further teaches the larger fibers applied on the air side (on top) [0062]. This first fine layer is applied first before the longer web (less fine). The examiner understands the finer fiber allows for more material per volume resulting in a higher density than a web made from the same furnish medium with less fine fiber (which would allow less matter per volume). LEE additionally teaches different density distributions through the web layers [0066]. This teaches the limitation of “wherein the first paper web has a higher density than the second paper web”. LEE does not teach the density of the individual layers. FUKUDA also teaches the formation of a carbon based gas diffusion paper for a fuel cell [column 15 line 8-10]. FUKUDA further teaches the sheets should have a mean bulk density not less than 1.4 g/cc (1.4 g/cm3) [column 15 line 27]. This range overlaps the density range of the second paper web and teaches the limitation of “and the second paper web a density of 1 g/cm3 to 5 g/cm3”. See 2144.05(I). The FUKUDA range also encompasses the range of the first web limitation of “the first paper web having a density of 3 g/cm3 to 10 g/cm3”. See 2144.05(I). FUKUDA teaches the paper provides improved buffer action and heat/chemical resistance [column 4 line 37]. It would be obvious to one skilled in the arts at the time of invention to combine the density taught by FUKUDA and the density distribution of LEE and expect a similar ability to maintain the permeability of the material. One would be motivated to combine the arts’ densities based on the similar use case and improved properties as taught by FUKUDA.
Claim 30 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by LEE (US 20140011118 A1) and ROSSET (US 20110056638 A1) as evidenced by United States Department of Energy (https://www.energy.gov/eere/fuelcells/fuel-cell-basics#:~:text=Polymer%20electrolyte%20membrane%20(PEM)%20fuel,to%20meet%20shifting%20power%20demands.).
For claim 30, LEE and ROSSET teach the green paper according to claim 16, as above. This teaches the limitation of “A process for producing a proton exchange membrane fuel cell (PEMFC), a proton exchange membrane electrolyzer cell (PEMEC), in electrolyzer cells or another power-to-X technology which requires correspond porous, conductive material for gas/power/reactant distribution, the process comprising: providing a gas diffusion layer (GDL) produced from a green paper according to claim 16,”. LEE teaches the fuel cell formed is a polymer electrolyte membrane fuel cell [0002]. The examiner notes polymer electrolyte membrane fuel cells are also called proton exchange membrane fuel cells, as evidenced by the United States Department of Energy (https://www.energy.gov/eere/fuelcells/fuel-cell-basics#:~:text=Polymer%20electrolyte%20membrane%20(PEM)%20fuel,to%20meet%20shifting%20power%20demands.). This teaches the limitation of “into the proton exchange membrane fuel cell (PEMFC), the proton exchange membrane electrolyzer cell (PEMEC), the electrolyzer cells or in the other power- to-X technology”.
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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 STEPHEN M RUSSELL whose telephone number is (571)272-6907. The examiner can normally be reached Mon-Fri: 7:30 to 4:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.M.R./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
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