DETAILED ACTION
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 .
Election/Restrictions
Applicant’s election of Group II, claims 10-17, in the reply filed on 12/17/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/1/2025.
Claim Interpretation
The phrase “Korean paper” (also known as “hanji” according to Specification para 0015) has been interpreted in view of Specification para 0057. Specifically, Korean paper, or hanji, has also been interpreted as specifically being made from the inner bark of the paper mulberry tree (see attached PTO-892 Reference U), distinct from other types of paper, e.g. rice paper.
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 15-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim 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.
Claim 15 recites the limitation "the gas diffusion layer surface". There is insufficient antecedent basis for this limitation in the claim.
Claim 16 (dependent on claim 10) recites “a carbon substance layer formed by fixing a carbon substance onto the surface of the substrate layer” (emphasis added), rendering claim 16 indefinite as to whether:
1) the “carbon substance layer” is intended to be the combined “substrate layer” of claim 10 having the “carbon substance” in the “support formed of Korean paper” or a distinct ‘layer’ thereof; and
2) “a carbon substance” is intended to be the same as “a carbon substance” of claim 10 or a distinct ‘carbon substance’ thereof.
Claim 17 recites the limitation "the carbon material layer". There is insufficient antecedent basis for this limitation in the claim.
Claim 17 (dependent on claim 10) recites "the carbon material layer", rendering claim 17 indefinite as to whether "the carbon material layer" is intended to refer back to the “substrate layer” of claim 10, the “carbon substance” of claim 10, the “Korean paper” (i.e. carbon material) of claim 10, or a distinct ‘layer’ thereof.
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 10, 13, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwon et al (Effective embedment of activated carbons into traditional Korean paper ‘Hanji’ and its application to flexible supercapacitors).
With respect to claims 10 and 16, Kwon discloses an activated carbons (AC)- “embedded Hanji electrode” (i.e. claimed “substrate layer”) for supercapacitor electrodes in an electrochemical cell (e.g. the substrate layer is usable in a fuel cell) (Abstract; p. 36, Experimental), wherein a support of Hanji (i.e. Korean paper) is embedded (i.e. claimed “fixedly impregnated)” with the AC to form the AC-embedded Hanji electrode (i.e. claimed “substrate layer”) (Abstract; p. 36, Experimental). The preamble reciting “a gas diffusion layer for a fuel cell, being used as a constituent of a unit cell in the fuel cell” has not been given patentable weight since “the body of [the] claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, […], the purpose or intended use of the invention”; as such, “the preamble is not considered a limitation and is of no significance to claim construction” (MPEP 2111.02, II).
With respect to claim 13, Kwon also suggests that instead of the activated carbons, carbon nanotubes (CNTs) and/or reduced graphene oxide (rGO) are known to be embedded in the Korean paper (p. 35, Introduction).
Claims 10-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heo et al (Large-Scale Conductive Yarns Based on Twistable Korean Traditional Paper (Hanji) for Supercapacitor Applications: Toward High-Performance Paper Supercapacitors).
With respect to claims 10 and 16, Heo discloses coated KTP (i.e. claimed “substrate layer”) for supercapacitors having “outstanding mechanical and electrochemical performance” due to “effects of the carbon nanomaterials coating on porosity, mechanical properties, and electrochemical performance of the supercapacitors” (e.g. the substrate layer is usable in a fuel cell) (Abstract; p. 2, right col. to p. 3, left col.), wherein a support of Korean traditional paper (KTP) is coated with “reduced graphene oxide (rGO) or/and single-walled carbon nanotubes (SWNTs)” (e.g. coated with claimed “carbon substance”) to form the coated KTP (i.e. the substrate layer) (Abstract; p. 2, right col.); the coated KTP has the carbon substance adhering to both surfaces of the coated KTP “as well inside the pores of [the coated] KTP” (p. 5, left col.), thus the carbon substance is “fixedly impregnated inside” the coated KTP. The preamble reciting “a gas diffusion layer for a fuel cell, being used as a constituent of a unit cell in the fuel cell” has not been given patentable weight since “the body of [the] claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, […], the purpose or intended use of the invention”; as such, “the preamble is not considered a limitation and is of no significance to claim construction” (MPEP 2111.02, II).
With respect to claim 11, Heo further discloses the support of the KTP has a base weight of “≈10 gsm (gram per square meter)” and thickness 60 mm (p. 10, Experimental Section, left col.).
With respect to claim 12, Heo further discloses the substrate layer (i.e. the coated KTP with the carbon substance) comprises a porosity 80.5%-86.0% (p. 5, Table 1).
With respect to claims 13-15, Heo further discloses the carbon substance comprises a mixture of SWNTs (i.e. claimed “carbon nanotubes”) and rGO (p. 5, Table 1), wherein fig. 3a depicts and teaches the coated KTP has a water drop contact angle of 117.2o (p. 5, right col.). Since claim 13 recites “the carbon substance comprises carbon nanotubes or a mixture of carbon nanotubes (CNT) and reduced graphene oxide (rGO)” (emphasis added), the “carbon nanotubes” is an optional limitation due to the alternative language “or”, and accordingly not required by claim 13; as such, claim 14 is dependent upon the optional limitation and accordingly not required; thus claim 14 is also rejected for the same reasoning set forth for claim 13. Alternatively for claim 14, since Heo teaches the claim requirements of claims 10 and 13 that the carbon substance is SWNTs alone for the coated KTP (p. 5, Table 1), a prima facie case of either anticipation or obviousness is established that Heo also then teaches the resulting coated KTP of SWNTs alone having the claimed property of “an electroconductivity of 9.00x101 S/cm or higher” (MPEP 2112.01, I).
With respect to claim 17, Heo further discloses the carbon substance is applied to and “sufficiently absorbed into” (i.e. impregnated) the KTP as an ink, wherein the ink (i.e. claimed “carbon material layer”) is applied to a thickness of 10 mm (p. 10, Experimental Section, left col.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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