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 .
GASKET MEMBER FOR SOLID POLYMER FUEL CELL, ELECTRODE-ELECTROLYTE MEMBRANE LAMINATE WITH GASKET MEMBER, AND SOLID POLYMER FUEL CELL
Examiner: Adam Arciero S.N. 18/276,804 Art Unit: 1727 May 12, 2026
DETAILED ACTION
The Application filed on August 10, 2023 has been received. The Response to Restriction filed on April 22, 2026 has been received. Claims 1-14 are currently pending.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on April 22, 2026 is acknowledged. The traversal is on the ground(s) that there would be no serious search burden. This is not found persuasive because the groups lack unity of invention because the shared technical feature does not make a contribution over the prior art as described in the requirement for restriction.
The requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 7-14 are withdrawn from consideration.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
Claims 1-6 recite an intended use for a gasket member. The courts have held that “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"). See MPEP 2111.02.
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.
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Minegishi (US 2017/0012292 A1; as found in IDS dated 08/10/2023).
As to Claims 1-2 and 5-6, Minegishi discloses a gasket member 54C, comprising: a laminate of a polyimide base layer 57C having a thickness of up to 100 microns; and an adhesive layer 56C,58C having a thickness of up to 30 microns and provided on opposite sides of the base layer (Fig. 9 and paragraphs [0087-0088, 0133, 0154-0155]). Minegishi does not specifically disclose the claimed retention of elongation at break. However, it is the position of the Office that the gasket of Minegishi intrinsically comprise the claimed retention of elongation at break given that the structure and materials of Minegishi and the claimed invention are the same, see MPEP 2112.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minegishi (US 2017/0012292 A1; as found in IDS dated 08/10/2023) in view of Kinoshita et al. (US 2005/0085576 A1).
As to Claim 3, Minegishi does not specifically disclose a nonwoven fabric substrate.
However, Kinoshita teaches of a nonwoven fabric substrate that can be coated to form a gasket (paragraphs [0064 and 0069]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the substrate of Minegishi to comprise a nonwoven fabric because Kinoshita teaches that nonwoven fabric is a suitable base for forming a gasket (paragraphs [0064-0069]). In addition, the courts have held that one of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art, see KSR, MPEP 2143, I, D.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Minegishi (US 2017/0012292 A1; as found in IDS dated 08/10/2023) in view of Aoyama et al. (US 2012/0167976 A1).
As to Claim 4, Minegishi does not specifically disclose the claimed anchor layer.
However, Aoyama teaches of using an anchor layer designed to increase contact between two layers (paragraph [0131]). At the time of the invention, it would have been obvious to one of ordinary skill in the art to modify the gasket of Minegishi to comprise an anchor layer between the layers of Minegishi because Aoyama teaches that increased contact between the two layers can be achieved (paragraph [0131]). In addition, the courts have held that one of ordinary skill in the art would have been capable of applying this known technique to a known device (method, or product) that was ready for improvement and the results would have been predictable to one of ordinary skill in the art, see KSR, MPEP 2143, I, D.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM ARCIERO whose telephone number is (571)270-5116. The examiner can normally be reached Monday-Friday 8:00-5 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Barbara Gilliam can be reached at (571)272-1330. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM A ARCIERO/ Primary Examiner, Art Unit 1727
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