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 .
Applicants’ response to Election/Restriction has been received on 4/6/26.
The text of those sections of Title 35, U.S.C. code not included in this action can be found in the prior Office Action.
Election/Restrictions
Applicant's election with traverse of Fig. 8A, in the reply filed on 4/9/26 is acknowledged. The traversal is on the ground(s) that all of the species are sufficiently related to each other such that an undue burden would not be placed upon the Office since all of the features of first individual plate and a second individual plate connected to each other, a bead arrangement around a through-opening, at least one first aperture formed in the first individual plate, and at least one conveying channel that fluidically connects the bead interior to the first aperture. These shared structural features are present across all of the alleged species depicted in the identified figures, and all alleged species are directed to the same general inventive concept of a separator plate having a conveying channel that fluidically connects the bead interior to an aperture in the first individual plate.
Applicant respectfully submits that the Office has failed to provide adequate reasons or examples to support a finding that there would be a serious search and/or examination burden if restriction were not required. The Office's bare assertion on page 3 of the Office action that "[t]he different species will present a serious search and examination burden" is insufficient to establish the requisite basis for a species restriction requirement. See MPEP § 808.02. The Office has not identified separate classifications, separate status in the art, or different fields of search that would be required for the various alleged species.
Fig. 8b-8D, to claims 1, 3-13, 15-20 will be examined.
The Applicants arguments are not found persuasive because all of the different species of bead arrangements would provide a serious burden that would significantly present a more extensive search if all species were examined together. It would require separate classification search of the different species. For Example, as disclosed by the 102 reference below which reads on Fig. 8a discloses the classification of the art can be H01M8/0206 (EP,US); H01M8/0258 (EP); H01M8/026 (US); H01M8/0276 (EP,US); Y02E60/50 (EP), however, Applicant’s invention can be can be found in H01M 8/0247.
In addition, all of the species would be rejoined and allowable if it is dependent on allowable subject matter.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/6/23 is being by the examiner.
Drawings
The drawings submitted on 4/6/23 has been considered.
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.
Claim(s) 1, 3-13, 15-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dichtungs et al. (DE20201810358).
Regarding claim 1, the Dichtungs et al. reference discloses a separator plate for an electrochemical system, comprising a first individual plate and a second individual plate, which are connected to each other, wherein the separator plate comprises an electrochemically active region (18), at least one through-opening (11) for the passage of a fluid, a bead arrangement arranged (Fig. 2) around the through-opening for sealing off the through-opening, wherein a bead interior is fluidically connected to the through-opening, at least one first aperture (Fig. 3) formed in the first individual plate, which aperture (13a’) extends substantially parallel to a plate plane defined by the separator plate, and at least one conveying channel (13a on one side of 12a) formed in the second individual plate, which conveying channel is arranged on one side of the bead arrangement, wherein the conveying channel formed in the second individual plate opens into a region of the first individual plate containing the first aperture and fluidically connects the bead interior of the bead arrangement to the first aperture formed in the first individual plate.
Regarding claim 3, the Dichtungs et al. reference discloses wherein, at least in some regions, the conveying channel extends from the bead arrangement in the direction of the electrochemically active region (Fig. 3).
Regarding claim 4, the Dichtungs et al. reference discloses wherein, at least in some regions, the conveying channel extends parallel and/or perpendicular to a main direction of extension of the bead arrangement (Fig. 3).
Regarding claim 5, the Dichtungs et al. reference discloses the conveying channel adjoins the bead arrangement (Fig. 3).
Regarding claim 6, Dichtungs et al. reference discloses the first individual plate has a conveying channel which is fluidically connected to the bead interior, in some regions overlaps with the conveying channel of the second individual plate and is spaced apart from the first aperture (Fig. 3 on the other side of 12a and closest to the manifold).
Regarding claim 7, Dichtungs et al. reference discloses wherein the first aperture is formed in a region of the plate that lies in a plate plane of the first individual plate (Fig. 3).
Regarding claim 8, Dichtungs et al. reference discloses the sealing beads are embossed on the separator plate, that is, the first aperture is surrounded by sealing bead that would read on the limitation the first aperture is surrounded by an embossed structure.
Regarding claim 9, the Dichtungs et al. reference discloses wherein a height of the embossed region (region between 12a and 13a), measured perpendicular to the plate plane, is smaller than a height of the bead arrangement (12a).
Regarding claim 10, the Dichtungs et al. reference discloses 10 wherein the first aperture is spaced apart from the bead arrangement (13a’ is spaced apart from 12a).
Regarding claim 11, the Dichtungs et al. reference discloses a separator plate for an electrochemical system, comprising a first individual plate and a second individual plate, which are connected to each other, wherein the separator plate comprises an electrochemically active region (18) at least one through-opening (11a) for the passage of a fluid, a bead arrangement arranged around the through-opening (Fig. 2), at least in one of the individual plates, for sealing off the through-opening, wherein a bead interior is fluidically connected to the through-opening (Fig. 2). At least one first aperture formed (13a’) in the first individual plate, which aperture extends substantially parallel to a plate plane defined by the separator plate, and at least one conveying channel (13a) formed in one of the individual plates, which conveying channel is arranged on one side of the bead arrangement, wherein the conveying channel opens into a region of the first individual plate containing the first aperture and fluidically connects the bead interior of the bead arrangement to the first aperture formed in the first individual plate (Fig. 3).
Regarding claim 12, the Dichtungs et al. reference discloses wherein the conveying channel is arranged on a side of the bead arrangement facing away from the through-opening (13a between 13a’ and 12a).
Regarding claim 13, the Dichtungs et al. reference discloses wherein the conveying channel is arranged on a side of the bead arrangement facing towards the through-opening (13a between 12a and 11).
Regarding claim 15, the Dichtungs et al. reference discloses wherein the first individual plate has at least two first apertures at least on the side of the bead arrangement facing away from the through-opening and/or facing towards the through-opening, wherein, in the first individual plate, an embossed structure extends, at least in some sections, between the two first apertures (Fig. 2 and Fig. 3).
Regarding claim 16, the Dichtungs et al. reference discloses wherein, in the first individual plate, at least one conveying channel extends as an embossed structure, at least in some sections, between the two first apertures (Fig. 2 and Fig. 3).
Regarding claim 17, the Dichtungs et al. reference discloses conveying channel.
It is noted that claim limitation, “the conveying channel is integrally formed in the individual plate embossing” are product-by-process claims. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since claimed invention is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 18, the Dichtungs et al. reference discloses at least one first aperture is created in the first individual plate. It is noted that claim limitation, “at least one first aperture is created in the first individual plate after the bead arrangement has been integrally formed” are product-by-process claims. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F. 2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since claimed invention is the same as to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
Regarding claim 19, the Dichtungs et al. reference discloses wherein the bead arrangement is integrally formed in the individual plate by embossing.
.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.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dichtungs et al. (DE20201810358)
Regarding claim 20, the Dichtungs et al. reference discloses producing a separator plate wherein the at least one first aperture is created in the first individual plate. The Dichtungs et al. reference is silent in disclosing that at least one first aperture is created in the first individual plate before or after the bead arrangement has been integrally formed, however, it would have been obvious for the first aperture is created in the first individual plate before or after the bead arrangement as the method step is limited by finite number of options, i.e. before, after or during. Common sense teaches that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of the patents together like pieces of a puzzle. A person of ordinary skill is also a person of ordinary creativity, not an automaton. The question to be answered is whether the claimed invention is a product of innovation or merely the result of common sense, ordinary creativity, and ordinary skill. KSR v. Teleflex
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELEN OI CONLEY whose telephone number is (571)272-5162. The examiner can normally be reached 8:30 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Smith can be reached at 5712728760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Helen Oi K CONLEY/Primary Examiner, Art Unit 1752
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