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 .
Response to Amendment
Applicant’s amendment filed 04/30/2026 has been entered. Claims 1-15 and 17-19 are currently pending. Claims 16 and 20 are cancelled. Claims 1, 7, 9, and 12 are amended. Support for the amended claims is found in the claims as originally filed. Applicant’s amendment has overcome each and every objection and rejection under 35 U.S.C. 112(b) set forth in the previously mailed Office Action. In view of Applicant’s amendment, the rejections set forth in the previously mailed Office Action have been withdrawn.
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, 3-6, 10-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Woods (US 20020160250 A1) in view of Jin et al. (US 20180346706 A1) and Fong et al. (US 20030049378 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), and a radical initiator (paragraphs 0066-0067). 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 the sealant including 0.15%-0.35% by weight of the radical initiator, the radical initiator and the amount thereof being chosen such that the sealant is curable in water at a temperature of 80°C-95°C in less than 45 minutes and such that the sealant has an activated resin stability of no curing up to one 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 the composition includes a radical heat-cure initiator in an amount of 0.1 to 10 wt% in order to initiate curing at the desired temperature (Jin paragraphs 0017-0018, overlapping the claimed range). Jin also teaches 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). Further, it would have been obvious to include the initiator in the amount disclosed by Jin to initiate curing at the desired temperature. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the priorart” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Woods in view of Jin is silent regarding wherein the sealant is curable in water at a temperature of 80°C-95°C in less than 45 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 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 3, modified 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, modified Woods discloses the limitations of claim 1. Woods further discloses that the sealant includes a trifunctional monomer (paragraph 0061, triethylene glycol dimethacrylate).
Regarding claim 5, modified 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).
Regarding claim 6, modified 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, modified 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, modified Woods discloses the limitations of claim 1. Woods further discloses that the sealant can be cured by heating (paragraphs 0042, 0056).
Regarding claim 12, modified Woods discloses the limitations of claim 1. Woods further discloses that the sealant is configured to be cured by heating (paragraphs 0027, 0066).
Regarding claim 13, modified 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, modified 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 15, modified 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, modified 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.
Regarding claim 19, modified Woods discloses the limitations of claim 1. Woods further discloses that the sealant comprises a plurality of ethoxylated [meth] acrylate monomers (paragraphs 0056-0062).
Claims 2 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) and Fong et al. (US 20030049378 A1) as applied to claim 1 above, and further in view of Inata (US 20210008859 A1).
Regarding claim 2, modified 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.
Claim 7 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) and Fong et al. (US 20030049378 A1) as applied to claim 1 above, and further in view of Zhou et al. (US 20190100616 A1).
Regarding claim 7, modified Woods discloses the limitations of claim 1. Woods is silent regarding wherein the sealant has a cured hardness of 85-95 Shore D.
Zhou discloses a curable composition which may be used for a cured article for a fuel cell (Zhou paragraphs 0016, 0115). Zhou further discloses examples of the cured composition with a hardness of 85.8 and 86.4 Shore D, within the claimed range (Zhou paragraph 0124, Table 6). The reference teaches that the cured composition provides an excellent balance of mechanical and thermal properties (Zhou paragraph 0028). Zhou and Woods are analogous because they both disclose cured compositions.
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 hardness disclosed by Zhou in order to provide a sealant with an excellent balance of thermal and mechanical properties.
Claim 8 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) and Fong et al. (US 20030049378 A1) as applied to claim 1 above, and further 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, modified 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 Jin et al. (US 20180346706 A1) and Fong et al. (US 20030049378 A1) as applied to claim 1 above, and further 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 a room-temperature strength thereof. 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.
Response to Arguments
Applicant’s arguments with respect to claims 2-15 and 17-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's arguments filed 04/30/2026 regarding claim 1 have been fully considered but they are not persuasive. Applicant asserts that Jin teaches away from the claimed configuration by including an inhibitor in the composition to improve stability. However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 692, 2023 USPQ2d 448 (Fed. Cir. 2023) ("a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed.") (internal quotations omitted) (quoting DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)); and Schwendimann v. Neenah, Inc., 82 F.4th 1371, 1381, 2023 USPQ2d 1173 (Fed. Cir. 2023) ("Although Oez [the prior art] used a white pigment with a cross-linking polymer, it does not discourage a skilled artisan from using the white pigment without a cross-linking polymer or lead the skilled artisan in a direction divergent from the path taken in the Appealed Patents. Thus, Oez's disclosure is substantial evidence that supports the Board's finding that Oez does not teach away from the proposed combination."). See also MPEP 2145(D). In this case, Jin clearly teaches that the initiator selection directly effects the stability of the composition and discloses an overlapping range of the amount of initiator included in the composition. While Jin suggests that an inhibitor can be included improve the stability, the reference does not expressly teach away from or discredit the claimed configuration. Therefore, the limitation is rendered obvious in view of Jin.
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.
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/B.T.L./Examiner, Art Unit 1727
/Maria Laios/Primary Examiner, Art Unit 1727
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