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 without traverse of Group I: Claims 1-7 in the reply filed on 5/14/2026 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Reference character (390). Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 7 is objected to because of the following informalities: The instant claim recites “forming a tungsten oxide layer and a catalyst layer on a first imide film” (emphasis added – See Line 10). It appears that the tungsten oxide layer and catalyst layer should refer back to the earlier recitation in Claim 1. To promote clarity, please amend the instant limitation to “forming the tungsten oxide layer and the catalyst layer on a first imide film” Appropriate correction is required.
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.
Claim 7 is 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 7 recites the limitation "the polymer electrolyte membrane". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 20140220237 (“Gross et al.”) in view of US Pub. No. 20170200954 (“Birss et al.”).
With regards to Claim 1, Gross et al. teaches a polymer electrolyte membrane fuel cell comprising a unit cell including a membrane-electrode assembly (MEA) wherein an electrolyte membrane (30) and a catalyst layer (20 or 25) are integrally combined, and a gas diffusion layer (10 or 15), wherein a tungsten oxide layer (40 or 45) is coated on a surface of at least one of the MEA and the gas diffusion layer constituting the unit cell (Figs. 1-2, [0010], [0046], [0048], ]0057], [0059], and [0061]-[0064]).
Gross et al. does not teach a bipolar plate.
However, Birss et al. recognizes that a conventional polymer electrolyte membrane fuel cell comprises a unit cell including a membrane-electrode assembly (MEA) wherein an electrolyte membrane and a catalyst layer are integrally combined, a gas diffusion layer, and a bipolar plate (Figs. 1-3B, [0008]-[0011], [0016], [0024]-[0026], and [0041]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have Gross et al.’s fuel cell comprise of bipolar plate(s) in order to provide desired flow field of hydrogen and air at the anode and cathode, respectively, and function as a current collector and mechanical support for the membrane-electrode assembly (MEA) [0041].
With regards to Claim 2, Gross et al. teaches the tungsten oxide layer (40) is deposited and coated with a thickness from about 10 nm to about 100 μm [0055]. It would have been obvious to one of ordinary skill in the art at the time of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Malagari, 182 USPQ 549.
Regarding the limitations “the deposition is performed by physical vapor deposition” and “the physical vapor deposition is performed by sputtering or electron beam vapor deposition” recited in Claims 3 and 4, 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.”, (In re Thorpe, 227 USPQ 964,966). 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 different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). In the instant case, the tungsten oxide layer (40 or 45) is deposited with a thickness as set forth above.
With regards to Claim 5, Gross et al. teaches the tungsten oxide layer (40 or 45) is coated on a surface of the MEA (Figs. 1-2).
With regards to Claim 6 reciting the limitation “the tungsten oxide layer is coated on a surface of the membrane-electrode assembly using a decal technique”, 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.”, (In re Thorpe, 227 USPQ 964,966). 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 different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113). In the instant case, Gross et al. teaches the tungsten oxide layer is coated on a surface of the membrane-electrode assembly (Figs. 1-2).
Claim 7 recites product by process limitations on how the tungsten oxide layer is formed. 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.”, (In re Thorpe, 227 USPQ 964,966). 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 different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
The only structure implied by this process step is a stacked structure of tungsten oxide and catalyst layer, wherein the stacked structure is on a surface of a polymer electrolyte membrane. In the instant case, Gross et al. teaches a stacked structure of tungsten oxide (40 or 45) and catalyst layer (20 or 25) on a surface of a polymer electrolyte membrane (30) (Figs. 1-2, [0048], [0059], [0062], [0064] and [0082]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA CHAU whose telephone number is (571)270-5496. The examiner can normally be reached Monday-Friday 11 AM-730 PM.
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/LC/
Lisa Chau
Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785
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