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 .
DETAILED ACTION
This Office action regarding Application No. 18/258,558 to Teshima et al., assigned to Shin-Etsu Polymer Co., Ltd., and Dainichiseika Color & Chemicals Mfg., Co., Ltd., Tokyo, Japan, and published as U.S. PG Publication 2024/0379971 A1 on 11/14/2024 is in response to applicant’s arguments/remarks and claims amendment filed 03/04/2026. Applicant’s response has been given full consideration.
This application is a 35 U.S.C. § 371 National Stage entry of International Patent Application PCT/JP2022/013985 filed 03/24/2022.
Status of the Claims
In the response field 03/04/2026 applicant has amended the claims of the application. Claim 1 has been amended by incorporation limitations of claim 6 and 8, and both claims 6 and 8 have been canceled. Dependence of claim 7 is changed from claim 6 to claim 1.The method claim 10, previously dependent on claim 1, has now been made into an independent claim and is amended by incorporation of limitations of claim 13, which has been canceled. Dependence of claim 14 is now changed from claim 13 to claim 10. Claims 14 and 15 have been amended in minor ways, wherein in claim 15 “sate” is corrected to “state” , and in claim 16 “and / or” is amended by deleting “or”.
The status of the claims stand as follows:
Currently amended 1, 3, 7, 10, 14-16
Original 2, 11
Previously presented 4-5, 9, 12
Canceled 6, 8, 13
Claims 1-5, 7, 9-12, 14-16 are currently pending in this application.
Withdrawal of Claim Rejections – 35 USC § 102
The rejection of Claims 1-5, 10-12, 16 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Iino Tadashi et al. (JP2005-209641; cited in the information disclosure statement, IDS, dated 06/21/2023; the English language machine translation used; and called JP '641) has been overcome by the amendments of claim 1 and 10. Therefore, the rejection has been withdrawn.
Upon further consideration the claims are now rejected under 103 over the same reference of JP ‘641 and presented in this Office action.
Claim Rejections – 35 USC § 103
The text of those sections of Title 35 U.S. Code not included in this section can be found in the prior Office Action.
Claim 1-5, 7, 10-12, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over by Tadashi et al. (JP2005-209641; cited in the information disclosure statement, IDS, dated 06/21/2023; the English language machine translation used here; hereafter called JP '641)
Regarding claim 1 JP '641 discloses a fuel cell separator and a manufacturing method of the separator (JP '641 Title, Abstract, paragraph 0015) the separator has at least two layers A and B, the surface layer A, also called layer 1, on one or both sides of the layer B also called layer 2 (JP '641 Fig. 2, paragraph 0020, 0038), having the layer structure [A layer/B layer/ A layer] (JP '641 Fig. 2, paragraph 0022), and the A layer and /or B layer is a conductive resin composite material containing a resin binder and a conductive material (JP '641 paragraph 0023), the conductive material include carbonaceous material (JP '641 paragraph 0030) and the carbonous material include graphite and carbon nanotube (JP '641 paragraph 0072).
Thus, JP '641 discloses a fuel cell separator comprising a plate 2 that contains graphite and resin (JP '641 paragraph 0038, 0072) and comprise on a surface thereof grooves (JP '641 Fig. 2, paragraph 0035) for supplying hydrogen and oxygen (JP '641 paragraph 0093), equivalent to a groove serving as a flow path; and a surface layer film 1 that covers both sides of the plate 2 in a thickness direction including the groove and the surface of the plate other than the groove (JP '641 Fig. 2 paragraph 0035); the surface layer film 1 contains resin and carbon nanotubes (JP ‘641 paragraph 0032, 0072).
JP ‘641 is silent about an intermediate layer film provided inside the plate in the thickness direction. JP '641, however, discloses the fuel cell separator having multilayer structure of two or more layers (JP '641 paragraph 0016). Therefore, it would have been obvious to a person of ordinary silk in the art to have made the "more than two layers" disclosed (JP '614 paragraph 0075) as intermediate layers for having a separator with enhanced properties such as low contact resistance and penetration resistance (JP '641 paragraph 0016). Such a modification is the use of known technique to improve similar devices (methods, or products) in the same way (MPEP 2143 C). Such an intermediate layer would have the same material as the surface layer film 1 that contains resin and carbon nanotubes (JP ‘641 paragraph 0032, 0072).
Regarding the thickness of the intermediate layer JP '641 discloses the thickness of the graphite layer B (inner layer) is 0.05 to 2 mm and can be larger than the thickness of the surface layer A, which is 0.5 mm or less (JOP '641 paragraph 0021) and if the thickness of the surface layer i.e. the A layer exceeds 0.5 mm, the grooves tend to be easily crushed when the stack is fastened (JP '641 paragraph 0042); thus, requiring the thickness of the surface layer to be small. JP '641 is silent about the intermediate layer is also larger than the thickness of the surface layer, but in view of the teaching of JP '641 as noted above it would have been obvious to a person of ordinary skill in the art to have optimized through routine experimentation the thickness of such intermediate layer and made it larger than the thickness of the surface layer because JP '641 teaches that if the thickness of the surface layer exceeds the value of 0.5 mm the grooves tend to be easily crushed. (See MPEP 2144.05 II).
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JP ‘641 Fig. 2
Regarding claim 2 JP '641 discloses the resin is polyphenylene sulfide (JP '641 paragraph 0060) disclosed among other resins.
Regarding claim 3 JP '641 discloses the thickness of the layer A, also called layer 1 is preferably 0.3 mm or less (JP '641 paragraph 0042), which includes the claimed range.
Regarding claim 4 JP '641 discloses the carbon nanotube is found in amount of 0.1 to 50 mass % (JP ‘614 paragraph 0084), which includes the claimed range.
Regarding claim 5 JP '641 discloses the carbon nanotube are multi-walled carbon nanotubes (JP '641 paragraph 0087).
Regarding claim 7 JP '641 discloses fuel cell separator having multilayer structure of two or more layers (JP '641 paragraph 0016), considered equivalent to the two or more layers of intermediate layer film.
Regarding claim 10 JP ‘641 discloses a method for manufacturing a fuel cell separator (JP ‘641 paragraph 0001, 0015), the separator 2 comprising a plate that contains a graphite and resin (JP ‘641 paragraph 0072), a groove serving as a flow path (JP ‘641 paragraph (JP '641 Fig. 2, paragraph 0035, 0093); a surface layer film 1 that covers both sides of the plate 2 in a thickness direction including the groove and the surface of the plate other than the groove (JP '641 Fig. 2 paragraph 0035). JP ‘641 is silent about an intermediate layer film, but discloses the fuel cell separator having multilayer structure of two or more layers (JP '641 paragraph 0016), which would have been obvious to a person of ordinary skill to have made an intermediate layer or intermediate layers as the "more than two layers" as disclosed (JP '614 paragraph 0075) for having a separator with enhanced properties such as low contact resistance and penetration resistance (JP '641 paragraph 0016). Such a modification is the use of known technique to improve similar devices (methods, or products) in the same way (MPEP 2143 C). The surface layer film 1 and the intermediate layer film contain resin and carbon nanotube (JP ‘641 paragraph 0072); and the thickness the thickness of the graphite layer B (inner layer) is 0.05 to 2 mm and can be larger than the thickness of the surface layer A, which is 0.5 mm or less (JOP '641 paragraph 0021), and if the thickness of the surface layer i.e. the A layer exceeds 0.5 mm, the grooves tend to be easily crushed when the stack is fastened (JP '641 paragraph 0042); thus, requiring the thickness of the surface layer to be small., and in view of the teaching of JP '641 as noted above it would have been obvious to a person of ordinary skill in the art to have optimized through routine experimentation the thickness of such intermediate layer and made it larger than the thickness of the surface layer because JP '641 teaches that if the thickness of the surface layer exceeds the value of 0.5 mm the grooves tend to be easily crushed. (See MPEP 2144.05 II).
JP '641 discloses a method of manufacturing the fuel cell separator wherein the layer A and the layer B are formed into sheets (and stacked for lamination) (JP '641 claim 16, paragraph 0034) considered equivalent to the first surface film arranging step, and the shaping material arranging step. JP '641 then discloses the method includes the step of the layers laminating using a compression molding or stamping molding method (JP '641 claim 15, 16, paragraph 0034) considered equivalent to the shaping step, and the compression molding include closing the mold while the shaping material is sandwiches between the surface layer film to produce the separator as presented in Fig. 2 of JP '641. But JP '641 is silent about a method step of formation of an intermediate layer of the shaping material. However, JP '641 discloses the formation of the layers of the separator where two or more (JP '614 paragraph 0075), and therefore, it would have been obvious to a person of ordinary skill to have modified the method of JP '641 and included formation step of the intermediate layer along with the method of forming the graphite plate and surface layer film. Such a modification is considered applying a known technique to a known device (method, or product) ready for improvement to yield predictable results (MPEP 2143 ID).
Regarding claim 11 JP '641 discloses the integrated sheet is compression molded or stamped to form grooves on both sides of the laminate (JP '641 Fig. 2, claim 16, paragraph 0034).
Regarding claim 12 the compression step, considered equivalent to the shaping step is performed in sheets of the respective layers (JP '641 paragraph 0034), and thus, the sheets are in a solidified step, which can be qualified as the claimed semi-solidified. The layer B containing graphite and the resin is laminated on the layer A equivalent to the surface layer film.
Regarding claim 14 and 15 JP '641 discloses the compression step, considered equivalent to the shaping step is performed in a sheets of the respective layers (JP '641 paragraph 0034), and thus, the sheets are in a solidified step, which can be qualified as the claimed semi-solidified. The layer B containing graphite and the resin is laminated on the layer A equivalent to the surface layer film containing carbon nanotube and resin (JP ‘614 paragraph 0072). JP '641 then discloses the method includes the step of the layers laminating using a compression molding or stamping molding method (JP '641 claim 15, 16, paragraph 0034)) considered equivalent to the shaping step, and the compression molding includes closing the mold while the shaping material is sandwiches between the surface lay er films to produce the separator as presented in Fig. 2 of JP '641.
Regarding claim 16 JP '641 discloses the method wherein the formation of the surface layer film, called layer A or layer 1 by JP '641 the carbon nanotube is dispersed in the resin was kneaded at 200 °C (JP '641 paragraph 0112); thus, the resin formed in a melted state, and the carbon nanotube dispersed in the melted resin.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over by Tadashi et al. (JP2005-209641; JP '641) as applied to claim 1, in view of Ando et al. (U.S. PG Publication 2019/0341630) 30.
The discussion of JP '641 as applied to claim 1 is fully incorporated here and is relied upon for the limitation of the claim in this region.
Regarding claim 9 JP '641 is silent about the plate contains aramid fiber different from the resin. Ando discloses a separator for fuel cell comprising graphite particles (Ando paragraph 0008) and aramid fiber as reinforcement of the fibrous resin (Ando paragraph 0026); thus, is different from the resin. Ando teaches when the binder, i.e. the resin, melt during heating formation, the aramid fibers maintain dispersed state of the particulate and fibrous conductive mater (such as graphite) (Ando paragraph 0026); the aramid fibers are also effective to impart heat resistance, strength, chemical resistance and other properties to base resin fibers (Ando paragraph 0026).
Therefore, it would have been obvious to a person of ordinary skill in the art to have modified the plate layer B of JP '641 by including aramid fiber different from the resin for the benefits disclosed to impart heat resistance, strength, chemical resistance and other properties to the base resin fibers (Ando paragraph 0026). Such a modification is considered the use of known technique to improve similar devices (methods, or products) in the same way (MPEP 2143 I C).
Response to Argument
In the response filed 03/04/2026 applicant has amended claims 1 and 10 by incorporation of limitations of claim 6 and 8 into claim 1 and the limitation of cliam13 into claim 10. As noted above in this Office action the rejection of 1-5, 10-12 and 16 under 102(a)(1) over JP 2005-209641, called JP ‘641, has been overcome by the amendment of the claims. Therefore, the rejections of the claims under 102(a)(1) over JP 2005-209641 is withdrawn. Upon further consideration and search the claims are now rejected under 103 over the same reference of JP 2005-209641.
Applicant traverses the rejection of claim 6, 7 and 8 under 103 over the JP 2005-209641 reference and argues that while JP ‘641 discloses one or two surface layers fails to disclose existence of an intermediate layer film. Applicant then argues that the reference does not disclose the thickness of the intermediate layer, and further does not disclose the intermediate layer contains resin and carbon nanotube.
Regarding the intermediate layer examiner notes that the reference of JP ‘641 does not explicitly discloses an “intermediate layer”, also stated in the Office action. However, JP ‘641 discloses the separator is a multilayer structure, of two or more layers. Thus, it would have been obvious to have made the layers of the separator of JP ‘ 641 into surface layers and intermediate layers. The inner layer or layers, as opposed to the surface layers, would be intermediate layers. Applicant has not presented any persuasive argument how the claimed intermediate layer is not obvious over the disclose of JP ‘641 that the separator has two or more layers, and by necessity, such a configuration can be made into a surface layers and intermediate layers. Thus, the disclosure of JP ‘641 renders the intermediate layer obvious.
Regarding the thickness of the intermediate layer examiner notes that the reference discloses JP '641 discloses the thickness of the graphite layer B (inner layer) is 0.05 to 2 mm and can be larger than the thickness of the surface layer A, which again renders obvious that the thickness of the intermediate layer can be made larger the thickness of the surface layer. Applicant has not presented any persuasive argument regard the obviousness rejection presented. Regarding the composition of the intermediate layer containing resin and carbon nanotube, JP 641 discloses the separator contains carbon nanotube and a binder.
Therefore, as presented above in this Office action the disclosure of the reference of JP ‘641 renders the claimed invention obvious. This Office action is made final.
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Conclusion
THIS ACTION IS MADE FINAL. 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 OMAR M KEKIA whose telephone number is (571)270-5918. The examiner can normally be reached 9:00am-5:00 pm,.
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/JONATHAN G JELSMA/Primary Examiner, Art Unit 1722
/OMAR M KEKIA/Examiner, Art Unit 1722
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