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/Restriction
Applicant’s election without traverse of Group II, claims 12-20 in the reply filed on 8 June 2026 is acknowledged.
Claims 1-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8 June 2026.
Information Disclosure Statement
The information disclosure statement filed 17 August 2023 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. The foreign patent document DE-102020132271-A1 is not provided in English and no explanation of its relevance with, e.g. an abstract has been given.
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 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.
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 12, 13, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Minamiura et al. (US 2017/0373329 A1) in view of Van Boyen et al. (US 2015/0030957 A1).
Regarding claim 12, Minamiura teaches a PEM fuel cell ([0006], [0044]; Fig. 2) comprising: an anode (Fig. 2, element 14 or 20); a membrane electrode assembly (10) comprising a membrane (12), an anode catalyst layer (14), and a cathode catalyst layer (16); a porous transport layer (20 or 40; [0054]: as a gas diffusion layer made from a sintered porous sheet) comprising an average porosity and flow channels (22 or 42, [0050] or [0053]: as anode or cathode flow paths) defined by flow channel walls and flow channel surfaces (22); and a flat bipolar plate adjacent to and in direct contact with the PTL (4a or 4b; [0058]: flat surface contacting PTL). Minamiura does not teach that the PEM fuel cell is related to a PEM water electrolyzer, nor the metal foam PTL, nor wherein the flow channel walls and the flow channel surfaces have an average porosity generally equal to the average porosity of the metal foam PTL.
However, Van Boyen teaches a similar electrochemical cell, comprising a pair of bipolar plates and a membrane electrode assembly between ([0008], [0014]). The electrochemical cell is relevant to both fuel cells and electrolysis cells ([0048]). In some embodiments, the cell includes gas diffusion layers on either side of the MEA, separating it from the bipolar plates ([0129]). The gas diffusion layer may comprise a metal foam and it is also disclosed as permitting the transport of gases and liquids; thus, it is equivalent to a porous transport layer ([0123]).
It would have been obvious to one of ordinary skill in the art as of the effective filing date to use the metal foam porous transport layer of Van Boyen in the electrochemical cell of Minamiura, and to use the cell of Minamiura as a water electrolyzer. A metal foam gas diffusion layer is able to provide structural support to the cell ([0123]), which one skilled in the art would recognize as advantageous because it may eliminate the need for separate structural elements. Van Boyen also demonstrates that a fuel cell is an obvious variant of a water electrolyzer, and the intended use of an apparatus does not distinguish it from the prior art when the underlying structure is taught; see MPEP § 2114(II). Furthermore, it would have been obvious to one of ordinary skill in the art to use a constant porosity throughout the porous transport layer. Although not directly disclosed by either Minamiura or Van Boyen, it is obvious to try one of either a constant or variable porosity in the gas diffusion layer, given this finite number of options. See MPEP §2143(I). Furthermore, nothing of record in Minamiura or Van Boyen indicates a variable porosity in the porous transport layer.
Regarding claim 13, modified Minamiura teaches that the flow channels are hollow flow channels ([0050], [0053]).
Regarding claim 17, modified Minamiura does not teach that the flow channels are at least one of laser machined flow channels, CNC machined flow channels, and electrical discharge machined flow channels. However, the product of a product-by-process claim (i.e. intended method of making) is not patentably distinct over the prior art when the end product is taught. See MPEP § 2113(I).
Regarding claim 18, modified Minamiura teaches that the metal foam PTL has a thickness between 200 μm and 500 μm ([0046], [0051]), fully within the claimed range of between about 50 μm and 600 μm.
Regarding claim 19, modified Minamiura teaches that the flow channels have a width between 0.1 and 1 mm ([0050]: given in μm). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP § 2144.05(I). The claimed range of between about 0.3 and 1.5 mm is therefore obvious.
Regarding claim 20, modified Minamiura teaches that the flow channels have a depth between 30 μm and 450 μm ([0050]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP § 2144.05(I). The claimed range of between about 20 μm and 300 μm is therefore obvious.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Minamiura et al. (US 2017/0373329 A1) in view of Van Boyen et al. (US 2015/0030957 A1) as applied to claim 12 above, and further in view of Sung et al. (US 2008/0166542 A1), as evidenced by Mangold et al. (DE 102020132271 A1, using attached machine translation).
Regarding claim 14, modified Minamiura does not teach wherein the flow channel surfaces of the flow channel walls are hydrophilic.
However, Sung teaches a gas diffusion layer for a fuel cell in which the gas diffusion medium is hydrophilic ([0043]).
It would have been obvious to one of ordinary skill in the art to use the hydrophilic material/structure of Sung in the porous transport layer taught by Minamiura in view of Van Boyen. One would make this modification in order to better draw water molecules toward the anode of the PEMWE (Sung [0011]). This is advantageous in not only PEMFCs, but also PEMWEs because Mangold teaches that the anode-side PTL of a PEMWE must distribute water over the membrane ([0009]).
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Minamiura et al. (US 2017/0373329 A1) in view of Van Boyen et al. (US 2015/0030957 A1) as applied to claim 12 above, and further in view of Mangold et al. (DE 102020132271 A1, using attached machine translation).
Regarding claim 15, modified Minamiura does not teach any specific metal composition of the metal foam PTL.
However, Mangold teaches a water electrolyzer ([0001]) with a PTL or GDL ([0004]), wherein the PTL is a metal foam ([0025]). Titanium is used as the material for the PTL ([0010]).
It would have been obvious to one of ordinary skill in the art to use a titanium metal foam in the PTL of Minamiura as modified by Van Boyen. One would be motivated to do so because titanium is able to withstand the strongly acidic environments often present on the anode side of electrolyzer cells ([0010]).
Regarding claim 16, Mangold further teaches that the metal foam PTL is characterized by a porosity of at least 60% ([0030]), i.e. between 60% and 100%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I). The range of between about 65% and 85% is therefore obvious.
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.
Claims 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-20 of U.S. Patent No. 12,525,617 B2 (hereinafter “Patent”) in view of Mangold et al. (DE 102020132271 A1).
Regarding application claims 12 and 17, the Patent teaches a PEM fuel cell comprising an anode, a MEA, and porous metal foam transport layer (Col. 7, lines 23-38: as gas diffusion layer). Mangold teaches that a water electrolyzer is an obvious variant of a fuel cell, sharing many of the same structural elements, including all of those which are claimed (Mangold [0001], [0004]). In addition, the intended use of a claimed apparatus, as e.g. either a fuel cell or a water electrolyzer, does not render it patentably distinct from the prior art when the underlying structure is taught. See MPEP § 2114(II).
The application’s additional limitation of “flow channel surfaces formed by CNC machining, laser machining, or electrical discharge machining” is reflected in the previously cited Col. 7, lines 23-38 and in Patent claims 17-19 (Col. 8, lines 14-31).
Regarding application claims 13-16, all of the same limitations are taught by Patent claims 13-16 (Col. 8, lines 1-14).
Regarding application claims 18-20, all of the same limitations are taught by Patent claim 20 (Col. 8, lines 32-37).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Saito et al. (US 2022/0081787 A1) teaches a porous electrode material. Ballantine et al. (US 2022/0049367 A1) teaches a bipolar plate with a flow field.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Colton B. Forry whose telephone number is (571)272-8873. The examiner can normally be reached Monday through Friday, 7:30 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Barr can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CBF/Examiner, Art Unit 1711
/MICHAEL E BARR/Supervisory Patent Examiner, Art Unit 1711
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