DETAILED ACTION
Response to Amendment
This Office action addresses claims 1, 2, 4, 5, 8-10, and newly added claims 11-15. Although claim 1 was amended, claims 1, 2, 4, 5, and 8-10 remain rejected for the reasons of record and claims 11-15 are newly rejected as necessitated by amendment. The double patenting rejection is also maintained for the reasons of record. Claims 12-15 are also newly rejected under 35 USC 112(a). Accordingly, this action is made final.
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 12-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 12-15 each recite that the polyazole fibers are 0.5-5 mass% of a combined amount of catalyst, carrier, electrolyte, and fibers (i.e., total solids). Paragraph [0110] (Example 2-1), cited by Applicant, teaches that the amount of fibers is 1% relative to the total solids. Paragraph [0115] (Example 2-3) teaches an amount 5 times that of Example 2-1. It appears that 0.5% is lower than what is supported by the application as originally filed, and the ratio of 0.5 and 5.0 is 10x, not the 5x disclosed in Example 2-3. Accordingly, the range is considered to constitute new matter. It is submitted that the range in the claim should be 1-5 mass%.
Claim Rejections - 35 USC § 103
Claims 1, 2, 4, 5, and 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019088042 in view of Lee et al (US 20120141913). Ozawa (US 20190393528) is taken as an English equivalent of WO ‘042.
Regarding claims 1, 9 and 10, Ozawa is directed to a polymer electrolyte fuel cell comprising a membrane electrode assembly, the MEA comprising an electrode catalyst layer on the side of a polymer electrolyte membrane ([0003], [0027]). Regarding claim 1, the catalyst layer comprises a catalyst (12), a conductive carrier (13) supporting the catalyst, a polymer electrolyte (14), and one or more types of fibers (15), one of which can be proton conductive ([0035]). The number of fibers having an axis inclination of between 0 and less than 45 degrees relative to a bonding surface between the electrolyte membrane and the catalyst layer is more than 50% of the total number of fibers (abstract). Regarding claim 2, this range is anticipated as each of Examples discloses an amount of fibers having an angle greater than 45 degrees as 5% or more (Example 1 discloses 11% (100%-89%)). Regarding claim 4, the fibers can also contain carbon nanofibers ([0036]). Regarding claim 8, the claimed thickness range is anticipated by at least Example 1 (disclosed thickness 15 microns).
However, the reference does not expressly teach that the proton conductive fiber comprises a polyazole as recited in claim 1.
Lee et al. teach a proton conductive polymer binder in a catalytic electrode in [0082], which can be a benzimidazole polymer.
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because 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 at the time of the invention. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct. 1727 (2007). The use of polybenzimidazole as the proton conductive fiber of Lee et al. would have involved no more than routine skill in the art as the polymer would have performed its intended function of being proton conductive in the electrode of Ozawa.
Regarding claim 5, Ozawa teaches a fiber diameter of 0.5-500 nm ([0038]). However, the reference is not anticipatory of the claimed range.
However, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the disclosed range encompasses the claimed range of 100-500 nm. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (In re Wertheim, 191USPQ 90; In re Woodruff, 16 USPQ2d 1934).
Regarding claims 11 and 12, the claims are rendered obvious because Ozawa teaches that “as for the fibrous substance, one of the following fibers may be used alone,” which includes the proton conductive fiber.
Regarding claims 13-15, [0065] of Ozawa provides guidance as to blending ratios. For example, it is disclosed that the fibrous substance 15 is blended at about the same amount or half the amount of the conductive carrier 13. The claimed ratio of fiber 0.5-5% of the solid content would be rendered obvious as the amount of fibrous substance can be manipulated to achieve the effects described at [0027] and [0036] of the reference. As such, the claimed ratio would be rendered obvious.
Double Patenting
Claims 1, 2, 4-5 and 8-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11594745 in view of Lee et al.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘745 patent recite all the limitations of claims 1, 4, 9 and 10 except for the polyazole fibers. However, Lee et al. teaches polybenzimidazole in a fuel cell electrode which renders obvious the claim limitation for the reasons stated above.
Regarding claims 2, 5, and 8, each of these claims defines an obvious variant of the ‘745 patent claims. Regarding claim 2, the claimed range is rendered obvious as there would be some amount of the fibers having an axis of inclination larger than 45 degrees. Regarding claim 5, the skilled artisan would be able to appropriately optimize the diameter of the fiber, rendering the claimed range obvious. Regarding claim 8, the thickness range of the patent claims encompasses the claimed range. Regarding claims 11 and 12, the patent claims recite that the electrolyte fibers may be the “one” type of fiber in the electrode. Regarding claims 13-15, the weight ratio of fibers could be optimized for the reasons stated above.
Response to Arguments
Applicant’s arguments filed December 8, 2025 have been fully considered but they are not persuasive. Applicant’s principal argument is that Lee does not teach polybenzimidazole fibers, and accordingly does not make up for the deficiency in Ozawa. The argument has been carefully considered but is not persuasive. Ozawa teaches in [0037] that “as to the proton conductive fiber according to the embodiment, any polymer electrolyte having proton conductivity processed into a fibrous form may be used.” Accordingly, there is no restriction on the fiber to be used in Ozawa as long as it is proton conductive. The position is maintained that the skilled artisan could look to a disclosure such as Lee to ascertain proton conductive polymers that can be used in fuel cell electrodes, and it would have been within the skill of the art to use the polybenzimazole as the fibers of Ozawa.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
March 24, 2026
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