CTFR 18/314,518 CTFR 101423 RESPONSE TO AMENDMENT Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Amendments to the claims, filed 30 March 2026, have been entered in the above-identified application. Claims 1-2 and 4-16 are pending in the application Claims 3 is cancelled in the application Withdrawn Objections/Rejections The 35 U.S.C. §112b rejections of claims 1-9 made of record in the office action mailed 04 February 2026, pages 2-3, have been withdrawn due to Applicant’s amendment in the response filed 30 March 2026. The 35 U.S.C. §102 rejections of claims 1, 2, and 4-9 as being anticipated by Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) made of record in the office action mailed on 04 February 2026, pages 4-6, have been withdrawn due to Applicant’s amendment in the response filed 30 March 2026. The 35 U.S.C. §102 rejections of claims 1, 4, and 8-9 as being anticipated by Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) made of record in the office action mailed on 04 February 2026, pages 6-7, have been withdrawn due to Applicant’s amendment in the response filed 30 March 2026. The 35 U.S.C. §103 rejections of claim 3 as unpatentable over Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) in view of Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) ) and Selcuk et. al. (United States Patent Application Publication No. 2009/0226786) made of record in the office action mailed on 04 February 2026, pages 8-10, have been withdrawn due to Applicant’s amendment in the response filed 30 March 2026. The 35 U.S.C. §103 rejection of claims 2, 5, and 6 as unpatentable over Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) in view of Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) made of record in the office action mailed on 04 February 2026, pages 10-11, have been withdrawn due to Applicant’s amendment in the response filed 30 March 2026. The 35 U.S.C. §103 rejection of claim 3 as unpatentable over Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) in view of and Selcuk et. al. (United States Patent Application Publication No. 2009/0226786) made of record in the office action mailed on 04 February 2026, pages 11-12, has been withdrawn due to Applicant’s amendment in the response filed 30 March 2026. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-103 AIA The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. 07-21-aia AIA Claim s 1, 2, and 4-11, 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) in view of view of Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716), Selcuk et. al. (United States Patent Application Publication No. 2009/0226786), Ugawa et. al. (Japanese Patent Application Publication No. 2011/165395), and Kobuchi et. al. (United States Patent Application Publication No. 2008/0026279 . For prior art discussion see English translations for JP-2007250353-A and JP-2011165395-A . Regarding claims 1-2 and 5-6 , Akiyama teaches a power generation unit cell ( cell ) which includes a membrane electrode assembly including an electrolyte membrane ( [0005], and fig. 2 ref. # 11 ) with catalyst layers located as to sandwich the electrolyte membrane layer ( [0007], and fig. 2 re. #14-17 ) . A support ( resin frame ) is located so as to surround the membrane electrode assembly ([0011], and fig. 2 ref. #34) , with a pair of separators located so as to sandwich the membrane electrode assembly and the support ( [0007], and fig. 2 ref. #18a, 18b ) . The support includes a base material and adhesive layers stacked on a first surface and a second surface of the base material that is opposite to the first surface of the base material ( [0012], and fig. 2 ref. #34 and #34 ). Each of the separators of the pair of separators includes a sealing part that is a smooth surface and a restraining part that is a portion with irregularities, in a portion of the separator that is bonded to corresponding one of the adhesive layers of the support ( fig. 2, ref. #33 and #18, see below ). The restraining part is provided with ridges ( ribs ) protruding from and receding into a surface of the restraining part, the surface being on a side of the support ( [0012], and fig. 2 ref. #42) . The ridges are adjacent to each other and are arranged at an interval ( intermittent ) ( [0013] ). The protrusions are cylindrical ( [0017] ) and are arranged in a staggered manner ( fig. 1 ref. #42 ). Akiyama does not explicitly teach protruding portions and recessed portions of the restraining part, on a side adhered to the adhesive layers, have a protrusion height and a depression depth of 20 m or more and 80 m or less Nonoyama teaches a fuel cell comprising a membrane electrode gas diffusion layer assembly, a seal member in a film-like form that is arranged in a periphery of the membrane electrode gas diffusion layer assembly, and a first separator and a second separator arranged such as to place the membrane electrode gas diffusion layer assembly and the seal member therebetween ( abstract ). Nonoyama also teaches a restraining part ( fig. 3, portion including ref, #45 and #55 ) that is provided with ridges protruding from a surface of the restraining part, the surface being on a side of the support ( fig. 3 ref. #45 and 55 ). The protrusion height and depression depth of the ridges are 20 µm or more and 80 µm or less ( 0.02 mm to 0.08 mm) ([0049]) . It would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to use a height of 20 µm or more and 80 µm or less for the protrusion . One of ordinary skill in the art would have been motivated to use this height as it is determined to ensure a thickness of the adhesive layer that provides the sufficient adhesive force between the adhesive layer and the separator ( [0048] ). Akiyama and Nonoyama do not explicitly teach an adjacent protrusion pitch between the ridges as being 0.4 mm or more and 1.5 mm or less. Selcuk teaches a fuel cell with improved current collectors ([0001]). Selcuk also teaches a set of spacers (interconnect plates) that surround an electrolyte, anode layer, and cathode layer ([0219], and fig. 19 ref. # 102-105) that has a series of ridges ([0082], and fig. 19 ref. #114). The adjacent protrusion pitch is between 0.5 mm and 1.0 mm ([0082]), which overlaps with the claimed range of 0.4 mm to 1.5 mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to use an adjacent protrusion pitch between 0.5 mm to 1 mm. One of ordinary skill in the art would have been motivated to use this sized spacing as ridges with these dimensions can help reduce bowing seen in flat portions due to loading and temperatures ([0080]). Akiyama, Nonoyama, and Selcuk do not explicitly teach a width of the restraining part is 1 mm or more and 5 mm or less. Akiyama teaches that the width of the restraining part ( the ribs arranged in multiple rows ) is the same as the width of the continuous seal lines ( [0017], and fig. 1, ref. #31, #21 ), though Akiyama does not specify the width of the continuous seal lines. Ugawa teaches a fuel cell with a plurality of stacked electrode-electrolyte integrated structures ( abstract ). Ugawa also teaches a continuous seal line ( gas seal ) positioned on the outer periphery to suppress the outflow of fuel gas ( [0023] ) that has a width of 0.5 mm to 5.0 mm ( [0073] ), a size range that maintains sealing performance in order to minimize pressure loss during fuel flow ( [0043] ). It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use a continuous seal line width of between 0.5 mm to 5 mm as taught by Ugawa in the fuel cell of Akiyama. One of ordinary skill in the art would have been motivated to use this range to minimize pressure loss during fuel flow. As Akiyama teaches the restraining part width is the same as the width of the continuous seal lines ( [0017] ), this would result in a restraining portion with a width of 0.5 mm to 5 mm, which overlaps with the claimed range of 1 mm to 5 mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). Akiyama, Nonoyama, Selcuk, and Ugawa do not teach a width of the sealing part is 1 mm or more and 5 mm or less. Kobuchi teaches a separator for a fuel cell that is excellent in workability and corrosion resistance ( abstract ). Kobuchi also teaches the separator containing a sealing portion on the separator including a high polymer elastic layer ( [0100], and fig. 7, ref. #50 ) to stop the leakage of hydrogen and oxygen from the fuel cell ( [0086] ). The sealing portion ranges from 1 mm to 10 mm, as this width makes it possible to attain sufficiently high sealability ( [0103] ). This range overlaps with the claimed range of 1 mm to 5 mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05). It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use a sealing portion with a width of 1 mm to 10 mm as taught by Kobuchi in the fuel cell of Akiyama. One of ordinary skill in the art would have been motivated to make this inclusion in order to attain sufficiently high sealability of oxygen and hydrogen ( Kobuchi, [0103] ). Regarding claim 4 , Akiyama also teaches the restraining part being provided with grooves recessed from a surface of the restraining part, the surface being on a side of the support ( the bottom portion of the ribs, fig. 2 ref. #42 ). Regarding claim 7, Akiyama also teaches each separator including a protruding portion between the sealing part and the restraining part. When the leftmost protrusion ( rib ) is viewed as not being included in the restraining part, then the protrusion is placed between the restraining part and sealing part ( fig. 2, see below ). PNG media_image1.png 332 689 media_image1.png Greyscale Regarding claim 8 , Akiyama also teaches the sealing part and the restraining part as being located adjacent to each other ( [0012], and fig. 2 ref. # 18, 34, and 42 ) ( see below ). When the leftmost protrusion is viewed as being included in the restraining part, the restraining part and sealing part are adjacent. PNG media_image2.png 439 908 media_image2.png Greyscale Regarding claim 9 , Akiyama teaches a fuel cell comprising a plurality of the power generation unit cells ( cells ) that are stacked ( [0009], and fig. 3 ref. #23) . Regarding Claim 10 , Akiyama also teaches the sealing part is a portion where surfaces of the pair of separators that contact the adhesive layers of the support are smooth ( fig. 2, sealing part and ref. #33, see above ) as there are no irregularities on the sealing part. Regarding Claim 11 , Akiyama also teaches the restraining part is a portion where surfaces of the pair of separators that contact the adhesive layers of the support have irregularities including the protruding portions and the recessed portions ( [0012], and fig. 2 ref. #42) . Regarding Claim 13 , Akiyama teaches the protruding portions and the recessed portions of the restraining part are alternately arranged in a direction toward an outer peripheral end of the power generation unit cell ( fig. 2, the protruding parts are the upper tips of the ribs and the recessed portions are the lower edge, which alternate toward an outer peripheral end of the power generation unit cell ). Regarding Claim 14 , Akiyama further teaches that the sealing part is located on an inner side of a sealing portion closer to a power generation portion ( when the sealing part is considered to be on the right side of the sealing portion ). Akiyama does not explicitly teach that the restraining part is located on an outer side of the sealing portion closer to an outer periphery, however this is considered to a rearrangement of parts. When there is merely a rearrangement of parts of the prior art without unexpected results produced, it is considered to be obvious ( MPEP 2144.04.VI ). Regarding Claims 15, Akiyama further teaches the pair of separators are made of gas-impermeable dense carbon ( carbon ) or metal plates ( [0011] ). The limitation “press-formed” is a method limitation and does not determine the patentability of the product, unless the process produces unexpected results. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because Akiyama discloses a metal separator ( [0011] ). Regarding Claim 16 , does not explicitly teach a base material of the support is made of an engineering plastic selected from the group consisting of polyethylene naphthalate, polyethylene terephthalate, polyphenyl ether, polyphenylsulfone, polysulfone, polyethersulfone, polyether ether ketone, polyimide, polyetherimide, polyamide-imide, polyphenyl sulfide, syndiotactic polystyrene, and nylon resins. Akiyama further teaches a base material of the support is made of a resin ( resin frame, [0011] ), though Akiyama does not explicitly teach the material of the resin frame. Nonoyama teaches a base material of the support ( the core layer, fig. 3 ref. #22 ) is made of a thermoplastic resin such as polyethylene naphthalate ( polyethylene naphthalene, [0040] ), which allows for a base material that is harder than the adhesive layers, in turn allowing for easier manufacturing of the fuel cell via heat pressing ( [0040]-[0041] ). It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use a thermoplastic resin such as polyethylene naphthalate as taught by Nonoyama in the fuel cell of Akiyama. One of ordinary skill in the art would have been motivated to use this material as it allows for simplified manufacturing of the fuel cell using hot-pressing ( Nonoyama, [0040]-[0041] ) . 07-21-aia AIA Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) in view of view of Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716), Selcuk et. al. (United States Patent Application Publication No. 2009/0226786), Ugawa et. al. (Japanese Patent Application Publication No. 2011/165395), and Kobuchi et. al. (United States Patent Application Publication No. 2008/0026279), further in view of Kondo (Japanese Patent Application Publication No. 2004/160472) . For prior art discussion see English translations for JP-2007250353-A, JP-2011165395-A, and JP-2004160472-A . Akiyama, Nonoyama, Selcuk, Ugawa, and Kobuchi are relied upon as described above. Akiyama, Nonoyama, Selcuk, Ugawa, and Kobuchi do not explicitly teach a maximum height Rz of the smooth surface in the sealing part as defined in JIS B 0601-2001 is 0.5 µm or less. Kobuchi teaches a method for making a stainless-steel separator for a fuel cell ( [0001] ). The method involves removing defects on the metal material by polishing ( [0001] ). The polishing uses rain size of the abrasive particles attached to the belt used in the belt polishing being 150 mesh, and the hardness of a rubber contact roll for pressing the belt against a stainless steel material being Hs75, which results in surface roughness Rz of the entire separator being approximately 0.5 µm ( [0026]-[0027], [0075], and fig. 11 #150, black dot ), which allows for the contact area between the separator and the electrode or other separator to be increased, and the electrical contact resistance can be reduced ( [0027] ). It would have been obvious to one of ordinary skill in the art, at the time of the effective filing date of the claimed invention, to use a separator with a surface roughness Rz of approximately 0.5 µm as taught by Kobuchi in the fuel cell of Akiyama. One of ordinary skill in the art would have been motivated to make this inclusion in order to decrease electrical contact resistance in the fuel cell. When the entire separator of Akiyama has a surface roughness Rz of 0.5 µm, the maximum height Rz of the smooth surface in the sealing part as defined in JIS B 0601-2001 is approximately 0.5 µm. In the case where the claimed value "overlaps or lies inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05) Response to Arguments Applicant’s arguments in the response filed on 30 March 2026 regarding the prior art rejections made of record in the office action mailed on 04 February 2026 have been considered but are moot due to the new grounds of rejection. Applicant’s arguments in the response filed on 30 March 2026 regarding the 35 U.S.C. §112b rejections of record have been considered but are moot since the rejection has been withdrawn. Applicant’s arguments in the response filed on 30 March 2026 regarding the 35 U.S.C. §102 of claims 1, 2, and 4-9 as being anticipated by Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) of record have been considered but are moot due to the new grounds of rejection. Applicant argues that the ribs of Akiyama do not teach the restraining part of claim 1. The Examiner respectfully disagrees. While the ribs of Akiyama ( fig. 2, restraining part, see above ) are backup ribs located in the fluid communication paths between manifolds and flow channels. Designed to prevent separator deformation from gas pressure, they are also located in a portion of the separator that is bonded to adhesive layers of the support ( fig. 2, adhesive layer ref. #33 contacts the ribs ). Applicant further argues that Akiyama does not teach a sealing part that is a smooth surface. The Examiner respectfully disagrees. Akiyama teaches a smooth surface without regularities located in a portion of the separator that is bonded to adhesive layers of the support ( fig. 2, sealing part, see above ). Applicant’s arguments in the response filed on 30 March 2026 regarding the 35 U.S.C. §102 of claims 1, 4, and 8-9 as being anticipated by Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) of record have been considered but are moot due to the new grounds of rejection. Applicant’s arguments in the response filed on 30 March 2026 regarding the 35 U.S.C. §103 of claims 3 as unpatentable over Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) in view of Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) ) and Selcuk et. al. (United States Patent Application Publication No. 2009/0226786) of record have been considered but are moot due to the new grounds of rejection. Applicant’s arguments in the response filed on 30 March 2026 regarding the 35 U.S.C. §103 of claims 2, 5, and 6 as unpatentable over Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) in view of Akiyama et. al. (Japanese Patent Application Publication No. 2007/250353) of record have been considered but are moot due to the new grounds of rejection. Applicant’s arguments in the response filed on 30 March 2026 regarding the 35 U.S.C. §103 of claim 3 as unpatentable over Nonoyama et. al. (United States Patent Application Publication No. 2017/0229716) in view of and Selcuk et. al. (United States Patent Application Publication No. 2009/0226786) of record have been considered but are moot due to the new grounds of rejection. Applicant’s arguments in the response filed on 30 March 2026 regarding the new claims 10-16 have been considered but are moot due to the new grounds of rejection. Conclusion 07-40 AIA Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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 Myles Alan Lovasz whose telephone number is (571)272-0214. The examiner can normally be reached Monday-Friday 7:30 am - 5:00 pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at (571) 272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MAL/ Myles Alan LovaszExaminer, Art Unit 1788 05/26/2026 /ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 Application/Control Number: 18/314,518 Page 2 Art Unit: 1788 Application/Control Number: 18/314,518 Page 3 Art Unit: 1788 Application/Control Number: 18/314,518 Page 4 Art Unit: 1788 Application/Control Number: 18/314,518 Page 5 Art Unit: 1788 Application/Control Number: 18/314,518 Page 6 Art Unit: 1788 Application/Control Number: 18/314,518 Page 7 Art Unit: 1788 Application/Control Number: 18/314,518 Page 8 Art Unit: 1788 Application/Control Number: 18/314,518 Page 9 Art Unit: 1788 Application/Control Number: 18/314,518 Page 10 Art Unit: 1788 Application/Control Number: 18/314,518 Page 11 Art Unit: 1788 Application/Control Number: 18/314,518 Page 12 Art Unit: 1788 Application/Control Number: 18/314,518 Page 13 Art Unit: 1788
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