DETAILED ACTION
Specification
The abstract of the disclosure and the disclosure are objected to because they describe an imaginary third nanowire composed of air. The abstract and specification should be amended accordingly based on the 35 USC 101 rejection below. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea. The claim(s) recite(s) an imaginary third nanowire composed of air. This judicial exception is not integrated into a practical application because an imaginary component as part of the electrode cannot be claimed. In this case, the imaginary third nanowire composed of air appears to be an air gap between the pairs of first and second nanowires of different materials (Applicant’s Figs. 1 and 2). For the purpose of examination, an imaginary third nanowire composed of air will be interpreted as an air gap.
Claim Rejections - 35 USC § 112
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 3 and 4 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Instant claim 1 recites “nanowire”. The accepted definition of “nano” in nanotechnology is at least one dimension 100 nm or less. In this case, Applicant claims the first and second nanowire may be up to 1000 nm or 1 micron and the third nanowire up to 10 microns, well outside of what one skilled in the art would consider “nano”. For the purposes of examination, Applicant’s claimed values will be used.
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, 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 1-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Takami (JP 2009-211953), machine translation.
Regarding claims 1, 3, 7, and 8, Takami teaches a base material for electrode for membrane electrode assembly comprising:
at least two layers of low water-repellent fibers 102 and highly water-repellent fibers 104;
an air gap between fibers 102 and 104 (Fig. 3-4).
The fibers have different water repellency; therefore, are made of different materials. The wires and air gap are side by side. The diameter (thickness) of the wires ranges from 0.1 µm to 10 µm (para 0049), which overlaps Applicant’s claimed range of 3 nm to 1000 nm, having at least one end point in common. Figure 3 to Takami is provided below.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the recited diameter because a prima facie case of obviousness exists in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”. 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). Furthermore, "[ A ] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP 2144.05.
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Regarding claim 2, Takami teaches 90o (Fig. 3).
Regarding claim 4, the air gap is interpreted to within a range of 1 nm and 10 µm based on a plain view of Fig. 3 and the diameters of the fibers. See MPEP 2144.05.
Regarding claim 5, Takami is silent as to the length; however, the length would be determined based on the size of the required electrode.
Regarding claim 6, Takami teaches at least two layers (Fig. 4).
Regarding claim 11, Takami teaches first fiber made of a metal fiber or a carbon fiber, and a second fiber made of a metal fiber (para 0010).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS BARCENA whose telephone number is (571)270-5780. The examiner can normally be reached Monday-Thursday 8-5 pm.
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/CARLOS BARCENA/Primary Examiner, Art Unit 1723