DETAILED ACTION
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
This office action is responsive to the amendment filed on 02/23/26. The applicant has overcome the 35 USC 102 rejection over KR’472 and the 103 rejection of claim 4 over Kim et al. However, applicant’s amendment has not yet satisfactorily overcome the 102 rejection over JP’615 and the 103 rejection of claims 5-6 over Kim et al. Refer to the aforementioned amendment for specific details on applicant's rebuttal arguments and/or remarks. Therefore, the present claims are now finally rejected over the remaining and a new ground of rejection(s) as formulated hereinbelow and for the reasons of record:
Election/Restrictions and Claim Disposition
Claims 8-17 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/15/25.
Claims 1-7 and 18 are under examination; of which claims 1-7 are new, and claim 18 is new.
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 are rejected under 35 U.S.C. 102a1 as being anticipated by the publication JP 2018-089615 (heretofore JP’615).
As to claims 1-3:
JP’615 discloses that it is known in the art to make an electrode for a membrane electrode assembly 10 comprising a catalyst metal 32 (0049) supported/deposited on a carbon catalyst support 31; an additive component including a carbon-based material such carbon black, graphene, carbon nanotube and carbon fiber (0047); and a proton conducting functional group 36 bonded thereto and moisture 35 (Abstract; 0125-0129; Figure 5). (emphasis supplied→) Examiner’s note: in this case, since independent claim 1 fails to unambiguously specify that the support (which can be a carbon-based material support) and the carbon material of the additive (which can also be a carbon-based material/support) are functionally and structurally distinct elements or components, it is deemed that the layered structure including the carbon-based support 31, catalyst metal/active metal 32 and the proton conducting functional group/component 36 satisfies the requirement being comprised in a single layer.
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Thus, the present claims are anticipated.
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over the publication KR 10-1162472 (heretofore KR’472).
As to claims 1-3:
KR’472 discloses that it is known in the art to make an electrode for a membrane electrode assembly (0004-0006) comprising a catalyst metal layer material (0019) supported/deposited on a catalyst support; an additive component including a carbon-based material such as carbon nanotube, carbon fiber, carbon black and a proton conducting functional group bonded thereto (Abstract; 0026; 0056; Claims 1-2 & 5; Figures 1b and 2-3). KR’472 discloses the use of sulfonic-acid groups as part of the membrane electrode assembly including the electrode (0029).
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KR’472 discloses an electrode according to the foregoing description. However, the preceding reference does not expressly disclose the catalyst and the additive being comprised in a single layer.
In view of the above, it would have been obvious to a skilled artisan prior to the effective filing date of the claimed invention to form or incorporate the catalyst and the additive of KR’472 in/into a single layer as instantly claimed because it is prima-facie obvious to make or form an element/component integral to other elements/components unless there are new/unexpected results and/or criticality be shown. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965) (A claim to a fluid transporting vehicle was rejected as obvious over a prior art reference which differed from the prior art in claiming a brake drum integral with a clamping means, whereas the brake disc and clamp of the prior art comprise several parts rigidly secured together as a single unit. The court affirmed the rejection holding, among other reasons, "that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice."). Thus, it is prima-facie obvious to incorporate the catalyst and the additive of KR’472 into a single layer. Further, assuming arguendo that the disputed issue is related to the final composition/constituents [of the single layer]: "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over: (a) the publication JP 2018-089615 (heretofore JP’615) and/or (b) the publication KR 10-1162472 (heretofore KR’472) as applied to claim 1 above, and further in view of the publication “Sulfonation of PIM-1-Towards Highly Oxygen Permeable Binders for Fuel Cell Application” by Kim et al (heretofore Kim et al).
JP’615 and KR’472 are both applied, argued and incorporated herein for the reasons expressed supra. However, the preceding reference does not expressly disclose the specific ionomer, additive and their respective amounts.
As to claims 5-6:
In this respect, Kim et al disclose that it is known in the art to make membrane electrode assemblies including electrodes containing proton conductive functional groups including sulfonic acid groups and functional groups represented by the following formula (see Abstract; see Results and Discussion) wherein the amount/concentration of the functional group ranges from 5-10 % (0.17 meq/g or for entry 3 and 0.23 meq/g for entry 4 (see Results and Discussion). In this case, it is asserted that the disclosed amount/concentration of such functional group satisfies the claimed requirement of about 3-30 parts by weight if converted by mathematical manipulation and dimensional analysis.
By combining the above teachings, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the specific proton conductive functional group material having the chemical formula/structure disclosed of Kim et al in the electrode of JP’615 and/or KR’472 as Kim et al teach that membrane electrode assemblies comprising electrode materials containing such specifically disclosed functional group assists in ensuring compatibility between membrane and electrode, higher permeability while preventing membrane electrode assembly delamination and an increased charge transfer resistance. Further, 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 would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
With respect to the specific amount of the additive and ionomer, Kim et al recognize the amount of material, concentration or content thereof as a variable which achieves a recognized result, thus, the claimed range of respective amount of material of the additive and the ionomer also results from the characterization as routine experimentation of an optimum or workable range. Accordingly, the amount of material of the additive and the ionomer is/are being construed as a result-effective variable. In re Aller 105 USPQ 233, 235; In re Hoeschele 160 USPQ 809, In re Antonie 195 USPQ 6 (MPEP 2144.05 IL Optimization of Ranges). Further, generally speaking, differences in concentration, amount of material, content, weight/mass percent and the likes will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration/amount of material is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. " In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it is prima-facie obvious to choose or select the specific concentration/amount of material or compositional contents/percents. See MPEP 2144.05 Obviousness of Ranges.
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Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over: (a) the publication JP 2018-089615 (heretofore JP’615) and/or (b) the publication KR 10-1162472 (heretofore KR’472) as applied to claim 1 above, and further in view of the publication JP 2000-090945 (herein called JP’945).
JP’615 and KR’472 are both applied, argued and incorporated herein for the reasons expressed supra.
As to claim 7:
KR’472 discloses the use of sulfonic-acid groups as part of the membrane electrode assembly including the electrode (0029).
However, the preceding reference does not expressly disclose the specific sulfur element and its respective amount.
As to claim 7:
In this respect, JP’945 discloses that it is known in the art to make a solid polymer membrane having a crosslink containing a sulfur element and an electrode having a catalyst material (0041-0044). In this case, JP’945 readily envisions using a sulfur element as part of a membrane electrode structure including an electrode containing a catalyst.
By combining the above teachings, it would have been within the purview of a skilled artisan prior to the effective filing date of the claimed invention to use the specific sulfur element of JP’945 in the electrode of JP’615 and/or KR’472 as JP’945 teaches that membrane electrode assemblies comprising electrode materials containing such specifically disclosed sulfur element assists in efficiently crosslink polymer membrane materials, thereby providing a polymer electrolyte membrane having high mechanical strength, being chemically stable and having low gas permeability and a fuel cell having excellent durability and high power output. Further, 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 would have yielded predictable results to one of ordinary skill in the art. Stated differently, combining prior art elements according to known methods to yield predictable results is prima-facie obvious. KSR International Co. v. Teleflex Inc., 550 US- 82 USPQ2d 1385, 1396 (2007). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950).
With respect to the specific amount of sulfur element, it is noted that the prior art as a whole recognizes the amount of material, concentration or content of the additive, in this case, sulfur element, as a variable which achieves a recognized result, thus, the claimed range of respective amount of material of the additive sulfur element results from the characterization as routine experimentation of an optimum or workable range. Accordingly, the amount of material of the additive and the ionomer is/are being construed as a result-effective variable. In re Aller 105 USPQ 233, 235; In re Hoeschele 160 USPQ 809, In re Antonie 195 USPQ 6 (MPEP 2144.05 IL Optimization of Ranges). Further, generally speaking, differences in concentration, amount of material, content, weight/mass percent and the likes will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration/amount of material is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. " In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus, it is prima-facie obvious to choose or select the specific concentration/amount of material or compositional contents/percents. See MPEP 2144.05 Obviousness of Ranges.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: as to claims 4 and 18, the applicant’s reply makes evident the reasons for allowance. Refer to the amendment dated 02/23/26 for details.
Claim 18 is allowed.
Claim 4 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.
Response to Arguments
With respect to the 102 rejection over JP’615, applicant's arguments, filed 02/23/26, have been fully considered but they are not persuasive. In this respect, applicant has contended that “while the support and the carbon material of the present invention…may both be carbon-based and thus identical in terms of material composition, they are functionally and structurally distinct. The support of the catalyst has the catalytic metal supported thereon, whereas the carbon material of the additive has the proton-conductive functional group bonded thereto”. In reply, applicant’s arguments are well-taken but they are still insufficient to overcome such prior rejection. In this regard, given that independent claim 1 fails to unambiguously specify that the support (which can be a carbon-based material support) and the carbon material of the additive (which can also be a carbon-based material/support) are functionally and structurally distinct elements or components, it is deemed that the layered structure including the carbon-based support 31, catalyst metal/active metal 32 and the proton conducting functional group/component 36 satisfies the requirement being comprised in a single layer. In independent claim 1, there is no material or structural difference(s) or distinction(s) between the [carbon-based] support component and the [carbon-based] carbon material [sic] of the additive so as to clearly and positively differentiate one from the other.
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In response to applicant's argument that the reference (i.e., JP’615) fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the electrode is manufactured by separately preparing the additive and the catalyst and then mixing them together”) 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). Thus, applicant’s arguments are not commensurate in scope with the claimed subject matter. If applicant wishes to have such limitation(s) fully considered for patentability, independent claim 1 must be amended to include or recite the same.
With respect to 102 rejection based on KR’472: applicant’s arguments, filed 02/23/26, have been fully considered and are persuasive. Therefore, such 102 rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the obviousness rejection under Section 103 based KR’472 set forth hereinabove. With regard to applicant’s argument that “the present invention incorporates both the catalyst (e.g., Pt/C and the additive (e.g., sulfonated carbon) within a single layer electrode”, the examiner has taken the position that it is within the ambit of a person having ordinary skill in the art to form or incorporate the catalyst and the additive of KR’472 in/into a single layer as instantly claimed because [it is settled law] it is prima-facie obvious to make or form an element/component integral to other elements/components unless there are new/unexpected results and/or criticality be shown. In re Larson, 340 F.2d 965, 968, 144 USPQ 347, 349 (CCPA 1965). Hence, it would be prima-facie obvious to incorporate the catalyst and the additive of KR’472 into a single layer. Moreover, assuming for the sake of argument the disputed issue is related to the final composition/constituents of the single layer: note that "[I]t is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition which is to be used for the very same purpose." In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
In response to applicant's argument that the reference (i.e., KR’472) fails to show certain features of the invention, it is noted that the features upon which applicant relies [i.e., (i) “to increase the degree of sulfonation of the additive, the present invention connects the carbon material with a proton exchange conductive group (e.g., a sulfonic acid group) via a linker such as aromatic hydrogen”; (ii) “to increase oxygen permeability while reducing the ionomer content” ]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). Thus, applicant’s arguments are not commensurate in scope with the claimed subject matter. If applicant wishes to have such limitation(s) fully considered for patentability, independent claim 1 must be amended to include or recite the same.
In response to applicant's argument that “the hydrophilic-modified nanocarbon in KR’472 is intended to ‘discharge water to the outside’ from the catalyst layer by utilizing capillary effects” and “that in KR’472 the microporous layer is strategically positioned between the catalyst layer and the gas diffusion layer to facilitate the discharge of water”, 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).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the teachings of the reference, 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, applicant is reminded that the test for obviousness is not whether the features of a reference may be bodily incorporated into the primary structure; nor is it that the claimed invention must be expressly suggested in any one of the references. Rather, the test is what the combined teachings of the reference would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In that, applicant contends that “KR’472 fails to provide sufficient motivation to one of skill in the art to merge KR’472’s catalyst and microporous layers into a single layer…given at least the fact that in KR’472 the microporous layer is strategically positioned between the catalyst layer and the gas diffusion layer to facilitate the discharge of water”. In this respect, applicant has not yet come forward with objective evidence to demonstrate that the microporous layer of KR’472 would be totally incapable of performing substantially the same functionality or at least any degree of such functionality (i.e., water discharge) if formed into a single layer per se. Burden of proof is shifted to the applicant to provide objective evidence that by doing so it “would undermine the specific functional intent of KR’472’s architecture” (as argued by the applicant). As set forth in MPEP 716.01(c) Probative Value of Objective Evidence: ATTORNEY ARGUMENTS CANNOT TAKE THE PLACE OF EVIDENCE
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The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. Thus, applicant is kindly reminded that objective evidence must be factually supported by an appropriate affidavit or declaration to be of probative value. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence." "[A]ppellants have not presented any experimental data showing that prior heat-shrinkable articles split. Due to the absence of tests comparing appellant’s heat shrinkable articles with those of the closest prior art, we conclude that appellant’s assertions of unexpected results constitute mere argument."). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991).
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 RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A. Smith can be reached at (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAYMOND ALEJANDRO/Primary Examiner, Art Unit 1752
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