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
Applicant’s election without traverse of claims 1-6 in the reply filed on 6/22/2026 is acknowledged.
Priority
Acknowledgement has been made of applicant’s claim for priority under 35 USC 119 (a-d). The certified copy has been filed on 8/9/2023.
Information Disclosure Statement
The Information Disclosure Statement (IDS) filed 8/9/2023, 11/22/2024, 1/15/2025, 7/8/2025 have been placed in the application file and the information referred to therein has been considered.
Drawings
The drawings received 8/9/2023 are acceptable for examination purposes.
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, 2, 6 are rejected under 35 U.S.C. 102(a1) as being anticipated by Kim (WO 2015/102377).
Regarding claim 1, Kim discloses a fuel cell membrane humidifier comprising:
a middle case 311 having a module insertion portion formed therein, the module insertion portion 330 including an outer partition wall formed to be spaced apart from an inner wall of a middle case 311;
a cap case 320A coupled to the middle case 311;
a hollow fiber membrane module 330 inserted into the module insertion; and
an active pressure buffer portion formed between the middle case 311 and the module insertion portion to prevent the module insertion portion from expanding due to a pressure difference between the inside and the outside of the middle case or eliminate the pressure difference, depending on an output situation of a fuel cell.
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Regarding claim 2, the active pressure buffer portion includes an inclined structure formed between the outer partition wall and the inner wall of the middle case.
Regarding claim 6, the hollow fiber membrane module includes at least one hollow fiber membrane bundle having a plurality of hollow fiber membranes integrated therein or at least one hollow fiber membrane cartridge having a plurality of hollow fiber membranes accommodated therein.
Allowable Subject Matter
Claims 3-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Kim (WO 2015/102377). Kim discloses
Regarding claim 3, wherein the inclined structure includes a first inclined member formed to be fixed to the outer partition wall, protrude in a direction of the middle case, and be spaced apart from the inner wall of the middle case;
a second inclined member formed on the inner wall of the middle case and formed to protrude in a direction of the outer partition wall and be spaced apart from the outer partition wall;
but does not disclose nor suggest:
a bypass hole formed in at least one of the first inclined member and the second inclined member, the bypass hole being able to be opened or closed depending on a magnitude of expansion pressure between the outer partition wall and the middle case,
as recited in claim 1.
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Kim discloses a hole, but the hole is not located in at least one of the first inclined member and the second inclined member. The function of the potting part (Applicant’s first and second inclined member) is to separate the space to prevent mixing of the fuel gas and the humidifying fluid. Page 8 of translation. Adding a hole on the potting part, as claimed by the Applicants, would cause mixing of the fuel gas and the humidifying gas in the housing, and would be against the function of the potting part 340.
Claim 4 and 5 depend from claim 3.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Refer to figure 10. Ahn (EP 4235879) discloses wherein the inclined structure includes a first inclined member formed to be fixed to the outer partition wall, protrude in a direction of the middle case, and be spaced apart from the inner wall of the middle case;
a second inclined member formed on the inner wall of the middle case and formed to protrude in a direction of the outer partition wall and be spaced apart from the outer partition wall;
but does not disclose nor suggest:
a bypass hole formed in at least one of the first inclined member and the second inclined member, the bypass hole being able to be opened or closed depending on a magnitude of expansion pressure between the outer partition wall and the middle case.
Ahn discloses if the sliding assemblies 29 and 30 that can slide according to the pressure of the wet gas are installed instead of the blocking member 28, even if the wetting upper surface 511 expands outward according to the pressure of the wet gas, wetting It is possible to prevent gas from being directly discharged to the discharge member 53 by bypassing the hollow fiber membrane, thereby improving humidification efficiency [0081], and hence teaches away from forming a hole on the sliding members 30.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/264777. Although the claims at issue are not identical, they are not patentably distinct from each other in that claim 1 of the copending application contains all the limitations of claim of the instant application. Claim 1 of the instant application therefore is not patently distinct from the copending claim and as such is unpatentable for obvious-type double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA KYUNG SOO WALLS whose telephone number is (571)272-8699. The examiner can normally be reached on M-F until 5pm.
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/CYNTHIA K WALLS/ Primary Examiner, Art Unit 1751
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