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
Claims 11-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/10/2025.
Applicant’s election without traverse of Group I (claims 1-10) in the reply filed on 12/10/2025 is acknowledged.
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.
Claims 1-10 are 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 1 states: “an unevenness forming step of forming a fine-size unevenness on a surface of the metal base material…” however, it is unclear as to the scope of “fine-size unevenness” the term is not well defined in the instant specification nor is the term well known or defined in the art. The closest the examiner can find within the instant would be the description within claim 6. Thus the examiner will treat it in the nano-scale, until further clarification is given.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 is rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Kim (US 2019/0058201).
As to claims 1, Kim discloses a manufacturing method of a separator for a fuel cell (figure 1 #100, [0009]-[0011]), the manufacturing method comprising: an unevenness forming step of forming a fine-sized unevenness on a surface of a metal base material ([0011]-[0017], etching, discussed throughout); and a coating layer forming step of forming a coating layer by coating carbon on the surface of the metal base material on which the unevenness is formed in the unevenness forming step ([0011]-[0016], discussed throughout).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 6, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (US 2019/0058201) as applied to claim 1 above.
As to claim 6, Kim is silent to a fine-size unevenness is formed in the form of a sinusoidal waveform with a width of 20 nm to 500 nm and a depth of 10 nm to 500 nm. However, Kim discloses the roughness of the interface between layers ([0042], discussed throughout) given that roughness is a measuring surface roughness, representing the arithmetic average of absolute vertical deviations (peaks and valleys) from a mean line along a surface. Given that there are peaks and valleys this would equate to a sinusoidal wave form. Furthermore, given Kim discloses the range of the roughness being 20-78 nm, this would equate to the depth of the waveform ([0042], discussed throughout). While, not explicitly state, one of ordinary skill within the art at the time of the effective filling date of the invention would understand that the width of the peaks and valleys would contribute to the function of the contact between layers. Thus, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to optimize the width as a result effective variables to achieve the desired adhesion and water discharge characteristics as disclosed within Kim ([0042], discussed throughout, see MPEP 2144.05 II).
As to claim 9, Kim is silent to wherein, in the coating layer forming step, the coating layer is formed in such a way as to have a porous surface. However, it would have been obvious to one of ordinary skill within the art at the time of the effective filling date of the invention to have the coating layer have a porous surface given a finite number of options i.e. a porous surface or a non-porous surface (see MPEP 2143 I).
As to claim 10, Kim discloses wherein, in the coating layer forming step, the coating layer is formed to have a thickness of 2 nm to 200 nm ([0014], [0045], discussed throughout). 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).
Allowable Subject Matter
Claims 2-5 and 7-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 2 requires “removing a passivation film formed on the surface of the metal base material by a gas carburizing process, so that the unevenness is formed on the surface of the metal base material” this limitation is not disclosed within Kim. While Topalski (US 2019/0363372) does discloses a bipolar plate for a fuel cell using carburizing. Topalski does not discloses the instant limitation. Thus the instant claimed limitation would be allowable once overcoming the 112 rejection and including into the independent claim.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN R OHARA whose telephone number is (571)272-0728. The examiner can normally be reached 7:30 AM-3:30 PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miriam Stagg can be reached at 571-270-5256. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN R OHARA/Examiner, Art Unit 1724