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 .
Election/Restrictions
Applicant’s election without traverse of group 1 (claims 1-3) in the reply filed on 05/01/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/24/2025 10/17/2023 and 06/29/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
The drawings were received on 06/29/2023. These drawings are acceptable.
Specification
The specification filed on 10/18/2023 was reviewed and is acceptable.
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 1 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Shimada et al. (JP2006128027A; Shimada hereinafter, a machine translation is being used for citations).
Regarding claim 1, Shimada discloses a fuel cell separator material (fuel cell separator molding member, abstract), comprising: a composite material (molding material 9 containing a molding member, graphite and a resin of the fuel cell separator, abstract & figure 1 below) containing electrically conductive particles (graphite, abstract) and a binder resin (resin, abstract); and soluble resin layers located on both sides of the composite material (see figure 1 below, the releasable film is removed after thermocompression molding of the fuel cell separator molding member 9, abstract).
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Figure 1: Shimada Figure 1
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.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Shimada et al. (JP2006128027A; Shimada hereinafter) as applied to claim 1 in view of Honma et al. (JP2004227884A; Honma hereinafter, see attached machine translation for reference).
Regarding claim 2, Shimada teaches the claim limitations of claim 1 as set forth above. Shimada fails to explicitly disclose that the soluble resin layers contain a soluble resin which is soluble in a polar solvent and that the soluble resin contains at least one selected from polyvinyl alcohol, celluloses, polyacrylic acids, and starch. Honma however in the same field of endeavor discloses that various substances can be used for the soluble resin, preferably polyvinyl alcohol which is soluble in water (a polar solvent) ([0042]). He further discloses an example (example 4, [0048]) using polyvinyl alcohol as the soluble binder. The raw material mixture is composed of a binder resin, a phenolic resin (20 parts by weight) and a conductive material, adding graphite powder (80 parts by weight, 50 to 200 μm). After compression molding the raw material mixture. The soluble polyvinyl alcohol film is washed away with water. Shimada and Honma are analogous prior art to the current invention because they are concerned with the same field of endeavor, namely fuel cell separator materials and their production. In seeking a separator material that contains a resin and conductive particles which further includes a soluble film that can be easily washed off, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the current invention, to replace the releasable film and raw materials disclosed by Shimada and replace them with the polyvinyl alcohol containing soluble resin layer, the phenolic resin and graphite particles disclosed by Honma to form a composite material with soluble resin layers on each side as disclosed by Shimada as doing so would amount to nothing more than to use a known material for its intended use in a known environment to accomplish an entirely predictable result.
Regarding claim 3, Shimada teaches the claim limitations of claim 1 as set forth above. Shimada fails to explicitly disclose that the soluble resin layers have a thickness of 0.5 μm or more and 10 μm or less. Honma discloses that the thickness of the resin film is preferably about 5 to 30 μm ([0042]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obvious. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA LEE HANYON whose telephone number is (571)272-8881. The examiner can normally be reached Mon-Fri. 7:30am-5pm.
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/S.L.H./Examiner, Art Unit 1725
/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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