DETAILED ACTION
Claim Analysis
The present application contains one active independent claim(s) (claim 1) and three active dependent claims (claims 2 - 4). No claims are currently withdrawn.
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Regarding the limitation(s) “for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance” in claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner has interpreted this limitation as a preamble limitation. The Examiner notes that this limitation is a preamble limitation(s) which do(es) not set forth any structure, but merely state(s) the purpose or intended use of the invention. As stated in the MPEP, “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation”)” (MPEP 2111.02 – emphasis added).
Regarding the limitation(s) “when the surface of stainless steel containing 15% or more of Cr by weight … following surface oxide element ratio” in claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants’ specification as it would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the following have been taken as the required claim construction:
A steel is an alloy where iron is alloyed with carbon, therefore this claim will be interpreted as if it recited: “A stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance, wherein the stainless steel contains at least carbon, 15% or more of Cr by weight, and the balance being Fe and other unavoidable impurities, and when the surface of the stainless steelThe Examiner notes this is explicit in Paragraph 0070+ of the as-filed disclosure. The balance being Fe (i.e. typically the majority element) is what makes this a steel.
There is also some confusion as to what is required in the claim given the claim language. E.g. is there a surface oxide layer (passivation layer) formed or is the oxide present through-out the steel? The as-filed disclosure that the intent is that there is a surface oxide layer and claim 1 has been interpreted as follows (including the changes above):
“A stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance, wherein the stainless steel contains at least carbon, 15% or more of Cr by weight, and the balance being Fe and other unavoidable impurities, comprising a surface oxide layer, and when the surface oxide layer of the stainless steelthe following surface oxide element ratio (1) value is 0.5 to 5, and following surface oxide element ratio (2) value is 0.5 or less: … ”.
Note: see also comments below regarding potential 112 issues…
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Specification
The amendments to the specification filed June 7, 2023 have been entered into the file record.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words (37 CFR 1.72). See MPEP § 608.01(b).
The form and legal phraseology often used in patent claims, such as "means" and "said," should be avoided. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, "The disclosure concerns," "The disclosure defined by this invention," "The disclosure describes," etc.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/786,509 (U.S. Patent App. No. 2023/0043454 A1) in view of one or both of Kim et al. (U.S. Patent App. No. 2018/0219201 A1) and/or Kim et al. (U.S. Patent App. No. 2016/0160329 A1). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, the above identified application claims a stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance (claim 1 and intended use/preamble), when the surface of stainless steel containing 15% or more of Cr by weight (claim 1) is measured by X-ray angle-resolved photoelectron spectroscopy using an Al-Kα X-ray source under the condition that the photoelectron take-off angle is 12° (ibid), the following surface oxide element ratio (2) value is 0.5 or less (claim 1), wherein the total oxides and hydroxides comprise the Cr oxides, the Cr hydroxides, the Fe oxides, the Fe hydroxides, and metal oxides(MO), and the metal oxides(MO) comprise mixed oxides, and M is Ti, Nb, Mn, Si, V or a combination thereof excluding Cr and Fe, and 0 means oxygen (claim 1).
The above identified application fails to explicitly recite the following surface oxide element ratio (1) value is 0.5 to 5, wherein Cr oxides mean Cr₃O₄, Cr₂O₃, CrO₂ or CrO₃, Cr hydroxides mean CrOOH, Cr(OH)₂ or Cr(OH)₃, and Fe oxides mean FeO, Fe₂O₃ or Fe3O4, and Fe hydroxides mean FeOOH.
However, Kim et al. (‘329 A1) disclose a substantially identical composition (Title; Abstract; and at least Paragraphs 0039 – 0058) stainless steel fuel cell separator made by a substantially identical process (Paragraphs 0059 – 0097 and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0014, 0037 and examples). Similarly, Kim et al. (‘201 A1) disclose a substantially identical composition (at least Paragraphs 0042 – 0057) stainless steel fuel cell separator (Title; Abstract) made by a substantially identical process (Paragraphs 0058 – 0062; 0073 – 0109; and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0013 - 0020 and examples).
While neither Kim et al. reference disclose the exact identical characterization means/test (i.e. surface oxide ratio (1) ), the Examiner notes that both references clearly teach the known concept that the amounts of Cr, Fe, their oxides, hydroxides, etc. are important for achieving good corrosion resistance and contact resistance – both necessary for fuel cell separators.
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the value of surface oxide element ratio (1) meeting the claimed limitations through routine experimentation, especially given the teaching in both Kim et al. references regarding the desire to control the concentrations of Cr, Fe and their associated oxides/hydroxides inorder to tailor the fuel cell separator corrosion and contact resistance values. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, this limitation is taught explicitly (claim 3).
Regarding claim 3, this limitation is taught explicitly (claim 4).
Regarding claim 4, the Examiner deems that a skilled artisan would be well versed in optimizing the passivation potential to meet the claimed limitations given the similarities in the other properties, methods and structures set forth above.
Claims 1 – 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/785,702 (U.S. Patent App. No. 2023/0066817 A1) in view of one or both of Kim et al. (U.S. Patent App. No. 2018/0219201 A1) and/or Kim et al. (U.S. Patent App. No. 2016/0160329 A1). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, the above identified application claims a stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance (claim 1 and intended use/preamble), when the surface of stainless steel containing 15% or more of Cr by weight (claim 1) is measured by X-ray angle-resolved photoelectron spectroscopy using an Al-Kα X-ray source under the condition that the photoelectron take-off angle is 12° (ibid), a surface oxide element ratio is met (claim 1).
The above identified application fails to explicitly recite the following surface oxide element ratios (1) value is 0.5 to 5 and (2) value is 0.5 or less.
However, Kim et al. (‘329 A1) disclose a substantially identical composition (Title; Abstract; and at least Paragraphs 0039 – 0058) stainless steel fuel cell separator made by a substantially identical process (Paragraphs 0059 – 0097 and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0014, 0037 and examples). Similarly, Kim et al. (‘201 A1) disclose a substantially identical composition (at least Paragraphs 0042 – 0057) stainless steel fuel cell separator (Title; Abstract) made by a substantially identical process (Paragraphs 0058 – 0062; 0073 – 0109; and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0013 - 0020 and examples).
While neither Kim et al. reference disclose the exact identical characterization means/test (i.e. surface oxide ratios (1) and (2) ), the Examiner notes that both references clearly teach the known concept that the amounts of Cr, Fe, their oxides, hydroxides as well as other metal oxides, etc. are important for achieving good corrosion resistance and contact resistance – both necessary for fuel cell separators.
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the value of surface oxide element ratios (1) and (2) meeting the claimed limitations through routine experimentation, especially given the teaching in both Kim et al. references regarding the desire to control the concentrations of Cr, Fe, other metal elements (M) and their associated oxides/hydroxides inorder to tailor the fuel cell separator corrosion and contact resistance values. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, this limitation is taught explicitly (claim 3).
Regarding claim 3, this limitation is taught explicitly (claim 4).
Regarding claim 4, the Examiner deems that a skilled artisan would be well versed in optimizing the passivation potential to meet the claimed limitations given the similarities in the other properties, methods and structures set forth above.
Claims 1 – 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/038,389 (U.S. Patent App. No. 2023/0420697 A1) in view of one or both of Kim et al. (U.S. Patent App. No. 2018/0219201 A1) and/or Kim et al. (U.S. Patent App. No. 2016/0160329 A1). This is a provisional nonstatutory double patenting rejection.
Regarding claim 1, the above identified application claims a stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance (claim 1 and intended use/preamble), when the surface of stainless steel containing 15% or more of Cr by weight (claim 1) is measured by X-ray angle-resolved photoelectron spectroscopy using an Al-Kα X-ray source under the condition that the photoelectron take-off angle is 12° (ibid), a surface oxide element ratio is met (claim 1).
The above identified application fails to explicitly recite the following surface oxide element ratios (1) value is 0.5 to 5 and (2) value is 0.5 or less.
However, Kim et al. (‘329 A1) disclose a substantially identical composition (Title; Abstract; and at least Paragraphs 0039 – 0058) stainless steel fuel cell separator made by a substantially identical process (Paragraphs 0059 – 0097 and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0014, 0037 and examples). Similarly, Kim et al. (‘201 A1) disclose a substantially identical composition (at least Paragraphs 0042 – 0057) stainless steel fuel cell separator (Title; Abstract) made by a substantially identical process (Paragraphs 0058 – 0062; 0073 – 0109; and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0013 - 0020 and examples).
While neither Kim et al. reference disclose the exact identical characterization means/test (i.e. surface oxide ratios (1) and (2) ), the Examiner notes that both references clearly teach the known concept that the amounts of Cr, Fe, their oxides, hydroxides as well as other metal oxides, etc. are important for achieving good corrosion resistance and contact resistance – both necessary for fuel cell separators.
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the value of surface oxide element ratios (1) and (2) meeting the claimed limitations through routine experimentation, especially given the teaching in both Kim et al. references regarding the desire to control the concentrations of Cr, Fe, other metal elements (M) and their associated oxides/hydroxides inorder to tailor the fuel cell separator corrosion and contact resistance values. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, this limitation is taught explicitly (claim 2).
Regarding claim 3, this limitation is taught explicitly (claim 3).
Regarding claim 4, the Examiner deems that a skilled artisan would be well versed in optimizing the passivation potential to meet the claimed limitations given the similarities in the other properties, methods and structures set forth above.
Claim Objections
Claims 1 – 4 are objected to because of the following informalities: claim 1 (and its dependents) comprise confusing language due to typographical omissions (see suggested claim language above; e.g. missing ‘the’ before ‘following’, etc.). Appropriate correction is required and claim 1 has been interpreted as set forth above.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for “A stainless steel fuel cell separator”, does not reasonably provide enablement for a stainless steel that is used in other inventive applications; e.g. a turbine engine, stainless steel piping for HF acid, etc.. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims. The Examiner notes that the disclosed invention is directed to optimize specific properties of the passivation film on a stainless steel fuel cell separator and that optimization of these properties would not be used in different applications that are outside the disclosed scope. As such, the Examiner deems that the claimed invention is properly directed to “A stainless steel fuel cell separator” not just a stainless steel “for a fuel cell separator”. This rejection can be overcome by amending the claims to positively recite the preamble as “A stainless steel fuel cell separator …”.
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 – 4 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “A stainless steel …” in line 1, then “when the surface of stainless steel” in line 2. It is unclear if this latter recitation is directed to the same stainless steel (i.e. “when the surface of the stainless steel) or an entirely different stainless steel. The Examiner notes that this rejection is overcome by the proposed claim language recited above vis a vis the preamble discussion.
The term “excellent through-plane electrical conductivity and corrosion resistance” in the claims is a relative term which renders the claim indefinite. The term “excellent” is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This rejection can be overcome by replacing the intended use preamble “for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance” with the positive recitation discussed above (“A stainless steel fuel cell separator, wherein the stainless steel contains … “.
Claims 2 and 3 recite the limitation "the surface oxide layer". There is insufficient antecedent basis for this limitation in the claims. The Examiner notes that the proposed claim language discussed above vis a vis the preamble language would overcome this rejection.
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 of this title, 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 pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kim et al. (U.S. Patent App. No. 2018/0219201 A1).
Regarding claim 1, Kim et al. (‘201 A1) discloses a stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance (Title; Abstract; claims; and intended use/preamble), wherein the stainless steel comprises an oxide passivation layer including Cr, Fe and other metal oxides (Paragraphs 0013 – 0020 and examples), and containing 15% or more of Cr by weight (Paragraph 0042).
Kim et al. (‘201 A1) fails to explicitly recite that the surface oxide passivation layer meets the oxide ratios (1) and (2).
However, Kim et al. (‘201 A1) disclose a substantially identical composition (at least Paragraphs 0042 – 0057) stainless steel fuel cell separator (Title; Abstract) made by a substantially identical process (Paragraphs 0058 – 0062; 0073 – 0109; and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0013 - 0020 and examples).
While Kim et al. (‘201 A1) does not disclose the exact identical characterization means/test (i.e. surface oxide ratios (1) and (2) ), the Examiner notes that Kim et al. (‘201 A1) clearly teaches the known concept that the amounts of Cr, Fe, their oxides, hydroxides as well as other metal oxides, etc. are important for achieving good corrosion resistance and contact resistance – both necessary for fuel cell separators.
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the value of surface oxide element ratios (1) and (2) meeting the claimed limitations through routine experimentation, especially given the teaching in Kim et al. (‘201 A1) above regarding the desire to control the concentrations of Cr, Fe, other metal elements (M) and their associated oxides/hydroxides inorder to tailor the fuel cell separator corrosion and contact resistance values. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 2 and 3, Kim et al. (‘201 A1) teach the importance of having good contact resistance (i.e. conductive behavior) as noted above. The Examiner notes that these limitations are, essentially, directed to forming the oxide surface layers that exhibit conductive or weak semi-conductive behavior, versus insulating/resistive behavior, which is clearly desired by the Kim et al. (‘201 A1) teachings. Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the bandgap energy meeting the claimed limitations and existence of an ohmic contact potential through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, similar to the reasons set forth above with regard to claims 2 and 3, Kim et al. (‘201 A1) disclose that the oxide surface layer should provide both good corrosion resistance (passivation) while also maintaining excellent contact resistance (conductivity) for the fuel cell end use. Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the passivation potential meeting the claimed limitations through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claims 1 – 4 are rejected under 35 U.S.C. 103(a) as being unpatentable over Kim et al. (U.S. Patent App. No. 2016/0160329 A1).
Regarding claim 1, Kim et al. (‘329 A1) discloses a stainless steel for a fuel cell separator with excellent through-plane electrical conductivity and corrosion resistance (Title; Abstract; claims; and intended use/preamble), wherein the stainless steel comprises an oxide passivation layer including Cr, Fe and other metal oxides (Paragraphs 0014. 0037, and examples), and containing 15% or more of Cr by weight (Paragraph 0039).
Kim et al. (‘329 A1) fails to explicitly recite that the surface oxide passivation layer meets the oxide ratios (1) and (2).
However, Kim et al. (‘329 A1) disclose a substantially identical composition (Title; Abstract; and at least Paragraphs 0039 – 0058) stainless steel fuel cell separator made by a substantially identical process (Paragraphs 0059 – 0097 and examples) wherein a passivation film having tailored Fe, Cr (and oxides thereof, etc.) is formed to provide excellent contact resistance and corrosion resistance (Paragraphs 0014, 0037 and examples).
While Kim et al. (‘329 A1) does not disclose the exact identical characterization means/test (i.e. surface oxide ratios (1) and (2) ), the Examiner notes that Kim et al. (‘329 A1) clearly teaches the known concept that the amounts of Cr, Fe, their oxides, hydroxides as well as other metal oxides, etc. are important for achieving good corrosion resistance and contact resistance – both necessary for fuel cell separators.
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the value of surface oxide element ratios (1) and (2) meeting the claimed limitations through routine experimentation, especially given the teaching in Kim et al. (‘329 A1) above regarding the desire to control the concentrations of Cr, Fe, other metal elements (M) and their associated oxides/hydroxides inorder to tailor the fuel cell separator corrosion and contact resistance values. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 2 and 3, Kim et al. (‘329 A1) teach the importance of having good contact resistance (i.e. conductive behavior) as noted above. The Examiner notes that these limitations are, essentially, directed to forming the oxide surface layers that exhibit conductive or weak semi-conductive behavior, versus insulating/resistive behavior, which is clearly desired by the Kim et al. (‘329 A1) teachings. Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the bandgap energy meeting the claimed limitations and existence of an ohmic contact potential through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 4, similar to the reasons set forth above with regard to claims 2 and 3, Kim et al. (‘329 A1) disclose that the oxide surface layer should provide both good corrosion resistance (passivation) while also maintaining excellent contact resistance (conductivity) for the fuel cell end use. Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the passivation potential meeting the claimed limitations through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: while no claim has been indicated as allowable, the Examiner notes that none of the prior art explicitly disclose controlling both surface oxide ratios (1) and (2) simultaneously. As such, there is potential for a showing of non-obvious results/unexpected results when both these surface oxide ratios are simultaneously met for a fuel cell separator.
Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results/non-obviousness must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Finally, Applicants are reminded that for a claim to be found allowable based on unexpected results (or a similar showing of non-obvious characteristics/behavior), the claim must be reasonably commensurate in scope to the showing. This would appear to require the positive recitation of the claimed invention as a stainless steel separator if the performance characteristics of the separator behavior was pointed to for distinguishing over the prior art based on unexpected results or non-obvious behavior with both surface oxide ratios (1) and (2) were simultaneously met versus when one or neither are met.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
January 22, 2026