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 Amendments
In response to amendments filed 06/09/2026:
Claims 1-25 are pending. Claims 1-2 have been amended. Claimed 11-20 remain withdrawn without traverse. Claims 21-25 are new.
Claim Interpretation
Claims 2 and 21-23 are considered product-by-process claims.
Claim 2 recites “wherein the sintered anode formed by sintering a metal powder in an atmosphere comprising H20 and H2”, claim 21 recites “the sintered anode is formed by sintering the metal powder at a temperature of 950°C to 1200°C”, claim 22 recites “the temperature is 1060°C to 1200°C” and claim 23 recites “the sintered anode is formed by sintering the metal powder for a period of 1.5 hours to 10 hours”.
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” MPEP 2113
Thus, as long as the prior art product is the same or obvious as that claimed, the claim is unpatentable even though the prior product may be made by a different process than one with the claimed specific atmosphere, temperature range, and sintering time. Therefore, prior art products with a sintered anode comprising a metal or NiAl (for claim 24) will read on the claims.
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 1-10 and 21-25 are rejected under 35 U.S.C. 103 as being unpatentable over Rosen et al. (US 2020/0176783) in view of Donado et al. (US 5229221A).
Regarding claim 1, Rosen teaches a molten carbonate fuel cell, comprising: a first separator plate 311; a cathode current collector 360 (P8.87; Fig. 9);
a cathode 350, the cathode current collector 360 providing support between the first separator plate 311 and a first surface of the cathode 350, an open area of the first surface of the cathode comprising 45% or more, overlapping the claimed range of 40% or more of the total surface area of the first surface of the cathode (P8.26.87; Fig. 9);
a second separator plate 310; an anode current collector 320;
an anode 330, the anode current collector 320 providing support between the second separator plate 310 and a first surface of the anode 330; and an electrolyte matrix 340 having an interface with a second surface of the cathode 330 and an interface with a second surface of the anode 350 (P8.87; Fig. 9).
Rosen is silent in teaching the structure/composition of the anode, or the anode as a sintered anode comprising a thickness of 0.30 mm to 0.55 mm and beginning-of-life porosity of 45% to 60%; however, Donado, in a similar field of endeavor, teaches sintered anodes for a molten carbonate fuel cell (C1-2).
Donado teaches anodes for a fuel cell must be porous but tend to have problems such as instability mechanisms such as pore closure over time, consolidation uniformity, and various other problems (C1). To overcome this, Donado teaches using a sintered anode in MCFC with a anode with a maximum porosity of 65%, including examples with a porosity of i.e. 57.06%, overlapping the claimed range of 45% to 60%, and a thickness of 0.25 mm to 1.27 mm, or 10 mils to 50 mils, overlapping the claimed range of 0.30 mm to 0.55 mm, to have a porosity and thickness that prevent gaps in a stack and consequent operating efficiency while improving creep resistance (Col. 2; Col.5 [20-30.55-64]; Col. 6 [18-21]).
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 anode of Donado in the fuel cell of Rosen with a beginning of life porosity maximum of 60%, and a thickness of 0.25 mm to 1.27 mm, as a reliable structure for an anode that can have a uniform thickness and pores while preventing creep and failure. Given Rosens silence in the structure of the anode, one of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and there would have been a reasonable expectation of success. 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. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
The examiner notes that a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton, and that a person of ordinary skill in the art will be able to fit the teachings of multiple patents together taking into account the inferences and creative steps that a person of skill in the art would employ. MPEP 2141.03 I
Regarding claim 2, modified Rosin in view of Donado teaches the sintered anode is formed by sintering a metal powder (Col. 3-5).
Although modified Rosin in view of Donado is silent in teaching the anode is sintered in atmosphere comprising H2O and H2, as noted above, this is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. Where the claimed and prior art products are substantially identical in structure or composition, a prima facie case of either anticipation or obviousness can be established even though the products are produced by a different process. MPEP § 2113
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the sintered anode formed by sintering a metal powder of modified Rosin in view of Donado appears to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the anode of modified Rosin in view of Donado. MPEP 2113
Regarding claim 3, modified Rosin teaches the open area of the first surface of the cathode comprises 50% or more of the total surface area of the first surface of the cathode (P26)
Regarding claim 4, modified Rosin teaches a distance from any point on the cathode surface to an open area on the cathode surface is 1.0 mm or less (P26).
Regarding claim 5, modified Rosin teaches a contact area of the cathode current collector with the first surface of the cathode is greater than 10% of the total surface area of the first surface of the cathode (P31).
Regarding claim 6, modified Rosin teaches an intermediate mesh layer between the cathode current collector and the first cathode surface, the cathode current collector providing support of the first surface of the cathode via the intermediate mesh layer (P65)
Regarding claim 7, modified Rosin teaches the average cathode gas lateral diffusion length is 0.30 or less, falling within the claimed range of 0.35 mm or less (P26)
Regarding claim 8, modified Rosin teaches the alkali carbonate electrolyte being at least partially contained in pores of the cathode (P88).
Regarding claim 9, modified Rosin teaches a molten alkali carbonate electrolyte, the molten alkali carbonate electrolyte being at least partially contained in the electrolyte matrix (P9.45.88).
Regarding claim 10, modified Rosin teaches an alkali carbonate electrolyte, wherein the alkali carbonate electrolyte comprises Na₂CO₃, Li₂CO₃, K₂CO₃, or a combination thereof (P45).
Regarding claim 21, modified Rosin in view of Donado teaches sintering at a temperature of 1000oC to 1200 oC (Col. 5 [42-44]), overlapping the claimed range 950°C to 1200°C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Furthermore, as noted above, this is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. Where the claimed and prior art products are substantially identical in structure or composition, a prima facie case of either anticipation or obviousness can be established even though the products are produced by a different process. MPEP § 2113
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the sintered anode formed by sintering a metal powder of modified Rosin in view of Donado appears to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the anode of modified Rosin in view of Donado. MPEP 2113
Regarding claim 22, modified Rosin in view of Donado teaches sintering at a temperature of 1000oC to 1200 oC (Col. 5 [42-44]), overlapping the claimed range 1060°C to 1200°C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05- I
Furthermore, as noted above, this is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. Where the claimed and prior art products are substantially identical in structure or composition, a prima facie case of either anticipation or obviousness can be established even though the products are produced by a different process. MPEP § 2113
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the sintered anode formed by sintering a metal powder of modified Rosin in view of Donado appears to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the anode of modified Rosin in view of Donado. MPEP 2113
Regarding claim 23, modified Rosin in view of Donado teaches the sintered anode is formed by sintering the metal powder for 5 hours (Col. 6 [3-10]).
Furthermore, as noted above, this is a product-by-process limitation. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. Where the claimed and prior art products are substantially identical in structure or composition, a prima facie case of either anticipation or obviousness can be established even though the products are produced by a different process. MPEP § 2113
There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the sintered anode formed by sintering a metal powder of modified Rosin in view of Donado appears to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the anode of modified Rosin in view of Donado. MPEP 2113
Regarding claim 24, modified Rosin in view of Donado teaches the metal powder comprises NiAl powder (Col. 4 [25-60]).
Regarding claim 25, modified Rosin in view of Donado teaches the sintered anode is free of a nickel screen, wherein no nickel screen is taught.
Response to Arguments
In response to the arguments filed 06/09/2026:
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues novelty in light of the product-by-process limitations; however, As noted above, claims 2 and 21-23 are considered product-by-process. Since the sintered anode of the prior art is similar to that of the Applicants, the Applicants process is not given patentable weight in the claim. There is no evidence that the product-by-process language as recited imparts specific structural characteristics to the product. As such, the sintered anode of the prior art appears to meet the structure set forth. Alternatively, any differences provided by the product-by-process limitation would provide a product that is obvious from the prior art. MPEP 2113
Furthermore, i.e., claims 22-23, wherein a temperature of 1060oC and a sinter time of 1.5 hrs. are recited, the instant disclosure does not clearly disclose to the skilled artisan that the inventor considered this range to be a part of their invention, and such range was carved out from an initially broader range. Arguments based on the range providing different results than the broader range would bring forth a new matter issue, as it would show that the newly claimed range is a different invention than the originally disclosed range. MPEP 2163(I)(B)
The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.
Applicant argues because a primary reference (Rosen) does not teach the limitations of the claimed anode, and a secondary reference drawn to a sintered anode does not recognize the benefits and limitations of the Applicants cathode structure, one of ordinary skill in the art would not combine the references.
Examiner notes 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, the sintered anode provides benefits such as reduced creep and maintained efficiency.
The examiner notes that a person of ordinary skill in the art is also a person of ordinary creativity, not an automaton, and that a person of ordinary skill in the art will be able to fit the teachings of multiple patents together taking into account the inferences and creative steps that a person of skill in the art would employ. MPEP 2141.03 I
Furthermore, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Mere lawyer's arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value.
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 Amanda Rosenbaum whose telephone number is (571)272-8218. The examiner can normally be reached Monday-Friday 9:00 am-5 pm.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Amanda Rosenbaum/Examiner, Art Unit 1752
/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
Prosecution Insights