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 .
Claim Rejections - 35 U.S.C. § 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 of this title, 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, & 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee et al., U.S. Patent App. Pub. No. 2008/0318114 A1 [hereinafter Lee] in view of Nishida et al., U.S. Patent No. 6,660,419 B1 [hereinafter Nishida].
The body of the claim is generally written with parentheses following the limitations indicating the prior art's teachings and/or examiner notes.
1. The following references teach the claim.
I. Lee
An anode-side separator (separator which can be used on the anode-side; Lee title, abstract) …, comprising:
a metal substrate consisting of titanium or stainless steel (separator 100 comprising titanium; Lee [0047]-[0053], figs. 5A-5B); and
a conductive oxide film including indium-tin-oxide (ITO) provided on a surface of the metal substrate (coating with indium doped tin oxide layering; id.)… .
The “used in a water electrolyzer” recitation is intended use. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. MPEP § 2114. Because the cited prior art teaches the structural limitations of the claim, the prior art is also structurally capable of performing the claimed intentions and therefore reads on the claimed language. See id.
Furthermore, it is obvious to try. Thus it would have been obvious for a person having ordinary skill in the art to have tried and eventually selected the combination of indium tin oxide with a gold topcoating out of the finite number of different combinations of materials with a reasonable expectation of success.
II. Oxide Film Thickness – Nishida
Lee is silent on wherein a thickness of the conductive oxide film is in a range of 0.05 microns or more and 0.8 microns or less.
However, Nishida teaches that the thickness of indium-doped tin oxide of 0.05-5 micrometers to be a suitable thickness for indium-doped tin oxide. Nishida col. 4 ll. 35-45.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s indium tin oxide to be Nishida’s 0.05-5 micrometers to yield the predictable result of having a suitable thickness for an indium tin oxide layer.
7. The anode-side separator of claim 1, wherein the thickness of the conductive oxide film is 0.3 m or more (rejected for similar reasons stated in the claim 1 rejection).
9. The anode-side separator of claim 1, wherein the conductive oxide film is directly provided on the surface of the metal substrate (the ITO film would be on the surface of the metal substrate since gold is a topcoating and above the ITO). See claim 1 rejection.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over MacKinnon et al., W.O. Int’l Pub. No. 2014/056110 A1 [hereinafter MacKinnon] in view of Lee and Nishida.
2. The following references render this claim obvious.
I. MacKinnon
A water electrolyzer (an apparatus that operates as both an electrolyzer and a fuel cell; MacKinnon p. 7) … .
II. Claim 1’s Separator
MacKinnon is silent on comprising the anode-side separator according to claim 1.
However, Lee teaches the anode-side separator according to claim 1. See claim 1 rejection. Lee teaches that the layers of the separator have corrosion resistance. Lee [0052]. Due to MacKinnon’s teaching that an apparatus can operate as an electrolyzer or fuel cell, a person having ordinary skill in the art would have recognized that Lee’s separator would also work in an electrolyzer.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s electrolyzer with Lee in view of Nishida’s separator to yield a separator with corrosion resistance.
Claims 3-5 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee and Nishida as applied to claim 1 previously and further in view of Kaminaka et al., U.S. Patent App. Pub. No. 2011/0250522 A1 [hereinafter Kaminaka].
3. The anode-side separator of claim 1, wherein a surface roughness of the metal substrate is in a range of 0.05 microns or more and 0.8 microns or less. Lee is silent on this.
However, Kaminaka teaches a surface roughness of at least 0.1 micrometers increases the adhesion of layers on a stainless steel separator. Kaminaka [0176].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s roughness to be at least 0.1 micrometers to increase the adhesion of layers on the separator.
4. The anode-side separator of claim 3, wherein a surface roughness of the metal substrate is 0.1 microns or more (rejected for similar reasons stated in the claim 3 rejection).
5. The anode-side separator of claim 3, wherein a surface roughness of the metal substrate is 0.3 microns or more (rejected for similar reasons stated in the claim 3 rejection).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over Lee and Nishida as applied to claim 1 previously and further in view of Shibuya et al., U.S. Patent App. Pub. No. 2013/0244129 A1 [hereinafter Shibuya].
6. The anode-side separator of claim 1, wherein a thickness of the metal substrate is in a range of 0.1 mm or more and 1 mm or less. Lee is silent on this.
However, Shibuya teaches a separator substrate thickness of 0.05-0.3 mm to have enough stiffness for assembly and minimize weight. Shibuya [0037].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s metal substrate to be 0.05-0.3 mm to have enough stiffness for assembly and minimize weight.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over Lee and Nishida as applied to claim 1 previously and further in view of Kaminaka and Shibuya.
8. The anode-side separator of claim 1, wherein
a surface roughness of the metal substrate is in a range of 0.3 m or more and 0.8 m or less (rejected for similar reasons as in the previous claims 3-5 rejections),
a thickness of the metal substrate is in a range of 0.1 mm or more and 1 mm or less, and the thickness of the conductive oxide film is in a range of 0.3 m or more and 0.8 m or less (rejected for similar reasons as in the previous claim 6 rejection).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 & 5-11 of copending Application No. 18/501,537 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application’s claims read on the current application’s claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that Lee teaches an intervening layer between the steel and ITO layer. Remarks p. 5.
The Examiner respectfully submits that Lee does not teach this. Lee does teach that the gold is a topcoating, thus the gold would be on top of the ITO layer. Lee [0053].
The Examiner has considered Applicant’s argument that the double patenting rejection should be withdrawn. Remarks p. 5.
The Examiner respectfully submits that there are other rejections pending and thus the provisional double patenting rejection remains.
The rest of the arguments are mooted by the new grounds of rejection.
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 Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794