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 .
Election/Restrictions
Applicant’s election of Species 1 in the reply filed on 11/19/25 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)).
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/21/23 was considered by the examiner.
Drawings
The drawings were received on 03/21/23.
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.
Claim(s) 1-4 and 7 are rejected under 35 U.S.C. 102a1 as being anticipated by the publication JP 2020-91973 (hereinafter JP’973).
As to claims 1, 3, 7:
JP’973 discloses that it is known in the art to make a membrane electrode assembly 9 including an electrode catalyst layer 8 having a thickness including a catalyst support containing carbon particles/carbon fiber/fibrous material 11, a polymer electrolyte material 12 (Abstract; 0010-0016; 0030-0035; see Figures 1-5).
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Examiner’s note: as to the method limitation, i.e.“after performing a start-stop test from 1V to 1.5V for 10000 cycles is 70 % or more of a thickness of the electrode catalyst layer before the start-stop test”, it is noted that a method limitation incorporated into a product claim does not patentable distinguish the product because what is given patentably consideration is the product itself and not the manner in which the product was made. Therefore, the patentability of a product is independent of how it was made. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any different, the difference would have been minor and obvious. Determination of patentability of a product-by-process claim is based on the scope of the product itself. “[E]ven 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.” In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113.
As to claim 2:
JP’973 discloses the electrode catalyst layer has a thickness/dimension of less than 20 µm (Abstract; 0028; 0031-0033).
As to claim 4:
Since the organic electrolyte fiber has been recited/claimed in an alternative manner in independent claim 1 (i.e., at least one of a carbon fiber and an organic electrolyte fiber), it is unnecessary to address further limitations related thereto. Otherwise, applicant must amend independent claim 1 to recite such limitation in a positive manner.
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over the publication JP 2020-91973 (hereinafter JP’973) as applied to claim 1 above.
JP’973 is applied, argued and incorporated herein for the reasons manifested above.
As to claims 5-6:
In this respect, the electrode catalyst layer of JP’973 contains a catalyst support containing carbon particles/carbon fiber/fibrous material 11, a polymer electrolyte material 12 (Abstract; 0010-0016; 0030-0035; see Figures 1-5).
However, the preceding reference does not expressly disclose the specific mass ratio of the fiber material to carbon particles, and the specific mass ratio of the polymer electrolyte to the carbon particles.
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 make the electrode catalyst layer of JP’973 by having the specific mass ratio of fiber material to carbon particles, and the specific mass ratio of polymer electrolyte to carbon particles as instantly claimed because JP’973 recognizes the amount/concentration of the electrode catalyst layer constituents (i.e., respective mass ratio of the electrode catalyst layer constituents) as a variable which achieves a recognized result (i.e., affecting the adhesion of the boundary surface between the electrolyte catalyst layer and the polymer electrolyte membrane), thus, the claimed range of the amount/concentration of the electrode catalyst layer constituents (i.e., respective mass ratio of the electrode catalyst layer constituents) results from the characterization as routine experimentation of an optimum or workable range. Accordingly, the amount/concentration of the electrode catalyst layer constituents (i.e., respective mass ratio of the electrode catalyst layer constituents) is 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 or amount of material (i.e., content, mass percent, mass ratio) will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration/amount of material/mass ratio 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/mass ratio. See MPEP 2144.05 Obviousness of Ranges.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references disclose membrane electrode assemblies including electrode catalyst layers containing carbon-based materials and a polymer electrolyte: Sugiura’270 and Kosako et al’155.
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752