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 the amendments received 05/06/2025:
Claims 10-15 are pending in the current application. Claims 10-15 are new. Claims 1-9 have been canceled.
Claim Interpretation
Claim 10 recites “… a second step of irradiating a laser light to create a plurality of dot patterned irradiation marks on an edge of the separator, and a third step of irradiating the laser light to create a plurality of continuous irradiation marks on at least a portion of a periphery of the refrigerant outlet hole…”; however, the disclosure does not teach what order these steps are performed in, or if they are performed simultaneously. Therefore, first/second/third steps do not further limit the recited method based on order of the steps and may be performed simultaneously or separately in any order.
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 10-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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.
The newly submitted claims recite “…the plurality of continuous irradiation marks are created in the third step such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions…” in claims 10 and 15, “…the plurality of continuous irradiation marks include at least two rows of irradiation marks extending in one direction, the at least two rows include a first row and a second row, a first one of the plurality of continuous irradiation marks overlaps with a second one of the plurality of continuous irradiation marks in a direction orthogonal to the one direction, one of the plurality of the continuous irradiation marks overlaps with an adjacent irradiation mark in the first row, and one of the plurality of the continuous irradiation marks overlap with an adjacent irradiation mark in the second row” in claim 13, and “…the continuous irradiation marks include a first row, a second row, and a third row, the first row and the second row extend parallel to, and overlap with, each other, the third row extends orthogonal to the first row and the second row, and the third row overlaps with at least a part of the first row and a part of the second row” in claim 14. Applicant relies on paragraphs [0021], [0028], and [0044], and in Fig.7 (Applicant arguments filed 05/06/2025) for support. Evidence that claims 10-15 fail(s) to correspond in scope with that which the inventor or a joint inventor, or for pre-AIA applications the applicant regards as the invention can be found in the instant specification filed 10/19/2022. In that paper, the inventor or a joint inventor, or for pre-AIA applications the applicant has stated that the embodiments of Fig. 7, where the plurality of continuous irradiation marks are created such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions, is a comparative example, which requires high heat input that can lead to warpage of the separator and joining defects (P27.38 of instant disclosure) and “…regions affected by heat by being irradiated by the laser light can be reduced in comparison with when irradiating with the irradiation mark pattern CP (see FIG. 7 ) in which the irradiation marks 31 are laid out without being separated from each other”(P37). At least these statements indicate that the invention is different from what is defined in the claim(s) because the instant disclosure teaches using the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions as a comparative example and that the invention is to create spaces (as originally claimed) to prevent deformation.
Claims 11-14 are rejected for depending on claim 10.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Shinpei et al. (JP 2020167111A) in view of Ringel et al. (WO 2021083602) and Tanimura et al. (US 2016/0336605).
Regarding claim 10, Shinpei teaches a manufacturing method of a separator 12/13 for a fuel cell, the manufacturing method comprising: a first step of press-molding a first separator that has a refrigerant inlet hole and a refrigerant outlet hole separator (P18; Fig. 1 – where three holes correspond to fuel, oxidant, and refrigerant); and irradiating a laser light onto the separator.
Shinpei is silent in specifically teaching a second step of irradiating a laser light to create a plurality of dot patterned irradiation marks on an edge of the separator, and a third step of irradiating the laser light to create a plurality of continuous irradiation marks on at least a portion of a periphery of the refrigerant outlet hole, wherein the plurality of continuous irradiation marks are created in the third step such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions; however, Ringel, in a similar field of endeavor, teaches a manufacturing method of a separator for a fuel cell, joining a separator with a thermoplastic adhesive sheet (P42-44.46-49).
Ringel teaches a separator manufacturing method including a second step of irradiating by laser light to create a plurality of dot patterned irradiation marks on an edge of the first separator and an edge of the second separator and irradiating the laser light to create a plurality of continuous irradiation marks on at least a portion of a periphery of the refrigerant outlet hole (P18.22.42-44.49; Fig. 2-3 – showing markings or shaping from beam around openings and separately around edges) to improve adhesion and bonding (P9-10). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established. MPEP 2112
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the separator manufacturing method of Ringel in Shinpei, after press-molding the separators, to improve adhesion between the adhesive sheet and the separators. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Modified Shinpei is silent in teaching the plurality of continuous irradiation marks are created such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions; however, Tanimura, in a similar field of endeavor, teaches joining a separator to an adhesive/sealant/thermoplastic/frame and using laser irradiation to form irradiation marks disposed in a separator at a joining surface (P22.66.84-85).
Tanimura teaches using irradiation mark patterns on a periphery of manifolds, or the fluid channels, in a pattern such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions, wherein the irradiation marks are all continuous markings and the one of the plurality is interpreted as the center point of the intersection of two orthogonal “lines” 87 (lines as a continuous group of markings) to assuredly fix a separator to a frame/thermoplastic and prevent deformation of the separator (P81.84-87; Fig. 11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to have the plurality of continuous irradiation marks of modified Shinpei created such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions, as taught by Tanimura, to assuredly fix a separator to the frame/thermoplastic and prevent deformation of the separator. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Furthermore, with respect to the above combination of overall element, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Regarding claim 11, modified Shinpei teaches the refrigerant outlet hole is rectangular including a first side, the first side is closest to the refrigerant inlet hole (Fig. 1), and in light of Tanimura, in the third step the laser light is irradiated to create the continuous irradiation marks on a periphery of the first side of the refrigerant outlet hole (P66-68.81)
Regarding claim 12, modified Shinpei in view of Ringel teaches the refrigerant outlet hole includes three sides that are different from the first side, the method further comprising a fourth step of irradiating the laser light to create a plurality of dot patterned irradiation marks on a periphery of the three sides of the refrigerant outlet hole (P42-51).
Regarding claim 13, modified Shinpei in view of Tanimura teaches the plurality of continuous irradiation marks include at least two rows of irradiation marks extending in one direction, the at least two rows include a first row and a second row, a first one of the plurality of continuous irradiation marks overlaps with a second one of the plurality of continuous irradiation marks in a direction orthogonal to the one direction,one of the plurality of the continuous irradiation marks overlaps with an adjacent irradiation mark in the first row, and one of the plurality of the continuous irradiation marks overlap with an adjacent irradiation mark in the second row, wherein the irradiation marks are all continuous markings and the one of the plurality is interpreted as the center point of the intersection of two orthogonal “lines” 87 (lines as a continuous group of markings) thus a center “x” point is a continuous overlap in each direction of non-uniform rows/columns (P81.84-87; Fig. 11).
Regarding claim 14, modified Shinpei in view of Tanimura teaches the continuous irradiation marks include a first row, a second row, and a third row, the first row and the second row extend parallel to, and overlap with, each other, the third row extends orthogonal to the first row and the second row, and the third row overlaps with at least a part of the first row and a part of the second row, wherein the irradiation marks are all continuous markings and the one of the plurality is interpreted as the center point of the intersection of two orthogonal “lines” 87 (lines as a continuous group of markings) to assuredly fix a separator to a frame/thermoplastic and prevent deformation of the separator (P81.84-87; Fig. 11).
Regarding claim 15, Shinpei teaches a manufacturing method of a unit cell for a fuel cell, the manufacturing method comprising: press-molding a first separator and a second separator 12/13 to create a refrigerant inlet hole and a refrigerant outlet hole on each of the first separator and the second separator 12/13 (P18; Fig. 1 – where three holes correspond to fuel, oxidant, and refrigerant);
a separator manufacturing step (P28-36); a separator preparing step of preparing a plurality of the separators 12/13 manufactured by the separator manufacturing step; an adhesive sheet member installing step of interposing a thermoplastic adhesive sheet member, or sealing member 14 between the separators prepared in the separator preparing step (P17); and a thermocompression bonding step of joining the separators stacked by interposing the thermoplastic adhesive sheet member 14 between the separators in the adhesive sheet member installing step, by thermocompression bonding (P25; Fig. 1).
Shinpei teaches manufacturing and preparing the separators by press-molding and including a step that laser irradiates a joining site of the first separator and the second separator to improve joining (P28-36), but fails to teach the specific manufacturing method according to claim 1; however, Ringel, in a similar field of endeavor, teaches a manufacturing method of a separator for a fuel cell, joining a separator with a thermoplastic adhesive sheet (P42-44.46-49).
Ringel teaches a separator manufacturing method including irradiating by laser light to create a plurality of dot patterned irradiation marks on an edge of the first separator and an edge of the second separator and irradiating the laser light to create a plurality of continuous irradiation marks on at least a portion of a periphery of the refrigerant outlet hole (P18.22.42-44.49; Fig. 2-3 – showing markings or shaping from beam around openings and separately around edges) to improve adhesion and bonding (P9-10). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP 2112
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the separator manufacturing method of Ringel in the unit cell manufacturing of Shinpei, after press-molding the separators, to improve adhesion between the adhesive sheet and the separators. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Modified Shinpei is silent in teaching the plurality of continuous irradiation marks are created such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions; however, Tanimura, in a similar field of endeavor, teaches joining a separator to an adhesive/sealant/thermoplastic/frame and using laser irradiation to form irradiation marks disposed in a separator at a joining surface (P22.66.84-85).
Tanimura teaches using irradiation mark patterns on a periphery of manifolds, or the fluid channels, in a pattern such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions, wherein the irradiation marks are all continuous markings and the one of the plurality is interpreted as the center point of the intersection of two orthogonal “lines” 87 (lines as a continuous group of markings) to assuredly fix a separator to a frame/thermoplastic and prevent deformation of the separator (P81.84-87; Fig. 11).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to have the plurality of continuous irradiation marks of modified Shinpei created such that one of the plurality of continuous irradiation marks overlaps with adjacent irradiation marks in at least two orthogonal directions, as taught by Tanimura, to assuredly fix a separator to the frame/thermoplastic and prevent deformation of the separator.
The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. MPEP 2143 C
Furthermore, with respect to the above combination of overall element, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 05/06/2025 have been fully considered but they are not persuasive.
Applicant argues “None of the cited art teach or suggest "a third step of irradiating the laser light to create a plurality of continuous irradiation marks on at least a portion of a periphery of the refrigerant outlet hole" as recited in claim 10.
Such arguments are unpersuasive in light of claim interpretation and “step” not correlated with an order. Furthermore, a hole in a separator plate used in a series of 6 is well known to be used for the coolant/refrigerant. It is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. MPEP 2112.01
Applicant argues none of the prior art references teaches continuous markings; however, Examiner notes “continuous” does not inherently mean “overlapping marks” and can be interpreted as a repeated pattern in an area. Furthermore, Tanimuras mesh pattern, created by irradiation markings, forms a set of overlapping lines. However, these lines are actually many overlapping “markings” created by the beam, as is inherent to the technology. Examiner notes that the Fig. 7 of the instant disclosure is a representation of what the inventor teaches is subpar to the actual invention (as noted in 112 rejection above).
Therefore, above set forth modified grounds of rejection establish prima facie obviousness of the new claims.
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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/Amanda Rosenbaum/ Examiner, Art Unit 1752
/Helen Oi K CONLEY/ Primary Examiner, Art Unit 1752