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 .
Claim Objections
Claim 12 is objected to because of the following informalities: In claim 12, “is further includes” should read “further includes”. 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 9 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 9 recites the term “RT strength”. The term is not defined by the claims or specification, rendering its meaning unclear in the scope of the claimed invention. For examination purposes, it will be assumed to mean room temperature strength.
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 1, 3-4, 6, 10-14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woods (US 20020160250 A1).
Regarding claim 1, Woods discloses a sealant configured to saturate and seal a graphite plate for use in a hydrogen (H2) fuel cell (paragraphs 0025-0027, 0051), wherein the sealant comprises one or more ethoxylated [meth]acrylate monomers (paragraph 0061).
Regarding claim 3, Woods discloses the limitations of claim 1. Woods further discloses that the sealant comprises a [meth]acrylate-based monomer (paragraphs 0056-0062).
Regarding claim 4, Woods discloses the limitations of claim 1. Woods further discloses that the sealant includes a trifunctional monomer (paragraph 0061, triethylene glycol dimethacrylate).
Regarding claim 6, Woods discloses the limitations of claim 1. Woods further discloses that the sealant is configured to be washed with water to remove it from the graphite plate surface prior to curing (paragraph 0080).
Regarding claim 10, Woods discloses the limitations of claim 1. Woods further discloses that the sealant does not include a surfactant (paragraphs 0056-0076, does not disclose inclusion of a surfactant in the sealant composition).
Regarding claim 11, Woods discloses the limitations of claim 1. Woods further discloses that the sealant can be cured by heating (paragraphs 0042, 0056).
Regarding claim 12, Woods discloses the limitations of claim 1. Woods further discloses that the sealant further includes a radical initiator and that is configured to be cured by heating (paragraphs 0027, 0066).
Regarding claim 13, Woods discloses the limitations of claim 12. Woods further discloses that the sealant has a cure profile of < 100 minutes at a temperature of < 100°C (paragraphs 0047, 0080, 90-180°C for a few minutes to an hour, overlapping the claimed ranges).
Regarding claim 14, Woods discloses the limitations of claim 13. Woods further discloses that the thermal cure profile is generated at atmospheric pressure (paragraphs 0036, 0077-0080, conditions are restored to ambient pressure before curing).
Regarding claim 19, Woods discloses the limitations of claim 1. Woods further discloses that the sealant comprises a plurality of ethoxylated [meth] acrylate monomers (paragraphs 0056-0062).
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1).
Regarding claim 5, Woods discloses the limitations of claim 1. Woods does not explicitly disclose that the sealant has a viscosity at 22°C from 8-20 centipoise (cP). However, Woods does disclose that the amount of sealant up-take of the graphite plates which are impregnated can be controlled over a wide range by varying process parameters and sealant viscosity (paragraph 0045). Woods is clearly teaching that the sealant viscosity is a results effective variable that that controls the sealant up-take of the impregnated graphite plates.
It would have been obvious to one of ordinary skill in the art at the time the invention was made for the sealant to have a viscosity at 22°C from 8-20 centipoise because it has been held by the courts that optimization of a results effective variable is not novel. In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980).
Claims 2 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Inata (US 20210008859 A1).
Regarding claim 2, Woods discloses the limitations of claim 1. Woods further discloses that the sealant comprises triethylene glycol dimethacrylate monomer (paragraphs 0061). Woods is silent regarding that the sealant comprises 70-95% by weight of triethylene glycol dimethacrylate monomer.
Inata discloses a curable composition for a polymer electrolyte comprising three components including a methacrylate monomer and a radical initiator, which may be used as an adhesive or sealant in a fuel cell (Inata paragraphs 0021-0035). Inata further discloses that the composition includes a component A from 30 to 98.9% by mass, and that the component A may be triethylene glycol dimethacrylate (Inata paragraphs 0040-0041, 0049, 0114, component A may be one of a5 examples which includes triethylene glycol dimethacrylate, overlapping the claimed range). The reference teaches that when the component A is in the disclosed range, the curability, adhesiveness, and hot water resistance is favorable (Inata paragraph 0047). Inata and Woods are analogous because they both disclose the use of resins to act as sealants in a fuel cell.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sealant disclosed by woods to include the triehtylene glycol dimethacrylate in the range disclosed by Inata. Doing so would provide favorable curability, adhesiveness, and hot water resistance.
Regarding claim 20, Woods discloses the limitations of claim 12. Woods is silent regarding 0.15%-0.35% by weight of radical initiator.
Inata discloses a curable composition for a polymer electrolyte comprising three components including a methacrylate monomer and a radical initiator, which may be used as an adhesive or sealant in a fuel cell (Inata paragraphs 0021-0035). Inata further discloses that the composition comprises a component C which may be a radical polymerization initiator in an amount of 0.1 to 15% by mass (Inata paragraphs 0150-0152, overlapping the claimed range). The reference teaches that the range provides sufficient curability and prevents deterioration (Inata paragraph 0151). Inata and Woods are analogous because they both disclose sealant resins for fuel cells.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sealant disclosed by Woods to include the radical initiator in the amount disclosed by Inata. Doing so would provide sufficient curability and prevent deterioration.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Inoue et al. (US 20020068211 A1), as evidenced by Shore Hardness Comparison Chart (Shore Hardness Scale Comparison Chart, Pad Print Machinery of Vermont.).
Regarding claim 7, Woods discloses the limitations of claim 1. Woods is silent regarding wherein the sealant has a cured hardness of up to 90 Shore D.
Inoue discloses a liquid thermosetting sealing agent for a fuel cell (Inoue paragraph 0035). Inoue further discloses that the sealing agent has a cured hardness of 30 to 70 Shore A (Inoue paragraph 0094, equivalent to 6 to 22 Shore D (see Shore Hardness Scale Comparison Chart), within the claimed range of “up to” 90 Shore D). The reference teaches that the hardness in this range provides sufficient durability and a desirable amount of thermal strain (Inoue paragraphs 0094-0095). Inoue and Woods are analogous because they both disclose cured resin sealants for fuel cells.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sealant disclosed by Woods to have the hardness disclosed by Inoue. Doing so would provide sufficient durability and a desirable amount of thermal strain.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Extrand et al. (US 20090162718 A1).
Regarding claim 8, “wherein the extractables in a cured graphite plate impregnated with the sealant are < 3% by weight” is considered a statement of intended use. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). In this case, Woods discloses the claimed sealant. Claim 8 is drawn to the intended use of the sealant in a graphite plate.
Furthermore, Extrand discloses high purity cured elastomeric materials which may serve as seals in a fuel cell (Extrand paragraph 0010). Extrand further discloses that the composition has a small amount of extractable material as it forms ionic impurities (Extrand paragraph 0013). The reference teaches that less than 300ng/cm2 provides prevents the reduction of ionic conductance of the electrolyte membrane (Extrand paragraph 0013). Extrand is clearly teaching that the amount of extractables is a results effective variable that controls the conductance of fuel cell components.
It would have been obvious to one of ordinary skill in the art at the time the invention was made for the extractables in a cured graphite plate impregnated with the sealant to be < 3% by weight because it has been held by the courts that optimization of a results effective variable is not novel. In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Inada et al. (JP 2000243409 A).
Regarding claim 9, Woods discloses the limitations of claim 1. Woods is silent regarding the sealant providing a flexural strength of impregnated graphite plates at 95°C of a < 30% drop from RT strength. The statement “that provides a flexural strength of impregnated graphite plates at 95°C of a < 30% drop from RT strength” is considered a statement of intended use. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). (see MPEP § 2115).
Furthermore, Inada discloses a fuel cell separator formed from a cured molded body comprising carbon powder and thermosetting resin (Inada paragraph 0009). Inada further discloses that the bending strength reduction of the body is 30% or less from room temperature to 100°C (Inada paragraph 0009). The reference teaches that this suppresses breakage and chipping (Inada paragraphs 0015-0016). Inada and Woods are analogous because they both disclose carbon-resin composites for use in fuel cells.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the plate disclosed by Woods to include the flexural strength disclosed by Inada. Doing so would suppress breakage and chipping.
Claims 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Fong et al. (US 20030049378 A1).
Regarding claim 15, Woods discloses the limitations of claim 1. Woods is silent regarding a gel time in a 90°C water bath of from 1.5 minutes to 3 minutes.
Fong discloses a process of hot water curing of impregnated porous parts in a hot water bath (Fong paragraphs 0021-0022). Fong further discloses that a longer gel time of the impregnant resin increases bleeding of impregnant from the part(s) as there is a longer time during which bleeding of the impregnant from the part(s) could occur or the impregnant could dissolve into the curing medium (Fong paragraph 0029). The reference teaches that selecting an impregnant with a decreased gel time may further reduce bleeding of impregnant (Fong paragraph 0030). Fong is clearly teaching that the gel time is a results effective variable that controls the amount of bleeding of impregnant.
It would have been obvious to one of ordinary skill in the art at the time the invention was made for the sealant to have a gel time in a 90°C water bath of from 1.5 minutes to 3 minutes because it has been held by the courts that optimization of a results effective variable is not novel. In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 17, Woods discloses the limitations of claim 12. Woods further discloses that the sealant is configured to cure in 10 minutes or less, or less than 45 minutes, after being impregnated in a graphite sheet (Woods paragraph 0047, 0077-0080 few minutes to an hour, overlapping the claimed range). Woods is silent regarding wherein the graphite sheet is immersed in water at a temperature of 80°C-95°C.
Fong discloses a process of hot water curing of impregnated porous parts in a hot water bath (Fong paragraphs 0021-0022). Fong further discloses that impregnated graphite plates are cured in a water bath at 80°C for 30 minutes (Fong paragraphs 0043-0044). The reference teaches that the water bath curing temperature and curing time are balanced for shorter cooling time and bleeding of the impregnant (Fong paragraph 0026). Fong and Woods are analogous because they both disclose graphite impregnated fuel cell sheets.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sealant disclosed by Woods to be cured in the conditions disclosed by Fong. Doing so would balance curing time and impregnant bleeding.
Regarding claim 18, “wherein the cure time is determined by a solvent extraction test” renders the claim a product-by process claim. 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113). While Woods is silent regarding the method of determining the cure time, the sealant and the claimed cure times are disclosed by the cited art.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Jin et al. (US 20180346706 A1).
Regarding claim 16, Woods discloses the limitations of claim 1. Woods is silent regarding an activated resin stability of no curing up to 1 week at 40°C.
Jin discloses a heat curable elastomeric composition for use as a sealant in a fuel cell (Jin paragraph 0014). Jin further discloses that a slow curing rate also provides long shelf-stability, while fast curing is desirable to minimize molding process time. Thus, heat curable compositions are a compromise of viscosity, cure speed and uncured composition stability (Jin paragraph 0004). The reference teaches that the shelf-stability is dependent on the initiator (Jin paragraph 0020). Jin is clearly teaching that the resin stability is a results effective variable effected by the initiator, and effects the viscosity and curing time of the composition. Jin and Woods are analogous because they both disclose heat curable fuel cell sealants.
It would have been obvious to one of ordinary skill in the art at the time the invention was made for the sealant to have an activated resin stability of no curing up to 1 week at 40°C because it has been held by the courts that optimization of a results effective variable is not novel. In re Boesch, 617 F2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
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/B.T.L./Examiner, Art Unit 1727
/Maria Laios/Primary Examiner, Art Unit 1727