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 traverse of Group I and Species ii in the reply filed on June 18th, 2026 is acknowledged.
In the remarks filed June 18th, 2026, applicant argues that in the Examiner’s description of another materially process that could produce the product as claimed, the Examiner has not identified this process disclosed in the specification, prior art of record, or general knowledge to support this assertion. Applicant argues that the proposed alternative process would negate the need for a protective barrier which is specifically provided for protecting the membrane, and thus the proposed alternative process is not practical/workable. Applicant argues that a separate protective film is an additional of additional componentry sought to be eliminated by the instant application.
These arguments have been fully considered but are not persuasive.
In response to applicant’s arguments, the Examiner presents that the requirement to show distinctness between a process of making and a product made is if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different process. As stated in MPEP 806.05(f), “Allegations of different processes or products need not be documented.” Therefore, in response to the arguments presented by applicant, the Examiner presents that the process described in the restriction requirement mailed March 11th, 2026 need not include evidence from the specification, prior art of record, or general knowledge to support this assertion.
Further, the Examiner provides that in setting forth an alternative process of forming the product as discussed in the Requirement for Restriction mailed March 11th, 2026, the method is only required to produce the same product as the instant claim. The same beneficial effects and advantages of such a method need not be the same as those of the instant application.
In the remarks filed June 18th, 2026, applicant argues that the method of Group II results in a product similar to that provided by Group I, and therefore any prior art relevant to the patentability of Group I would similarly be relevant to that of Group II.
These arguments have been fully considered but are not persuasive.
In response to applicant’s arguments, the Examiner presents that the Group I product claims would require at least searching H01M8/0276 and a unique text search including “side perimeter portion” while the Group II product claims would require at least searching H01M4/8807 and a unique text search including “GDE layer coinciding with the membrane portion, bending upward relative to an inner portion of cathode GDE layer, and removal after the membrane has been adhered to the cathode top face.”
Therefore, the restriction as described in the mailing of the restriction requirement March 11th, 2026 is deemed proper and claims 7; 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species ii and Group II corresponding to a method for manufacturing a protected membrane electrode assembly, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 18th, 2026.
Claim Rejections - 35 USC § 102(a)(1)
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.
Claims 1, 7-11, 17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuroki (U.S. Patent Publication No. 20060166076 A1).
Regarding claim 1, Kuroki teaches a protected membrane electrode assembly (MEA) for a fuel cell (Paragraphs 0040-0048), comprising:
an anode gas diffusion electrode (GDE) layer (Figure 6, Elements 24 and 26) (Paragraph 0102) having an anode top face and an anode bottom face;
a cathode GDE layer (Figure 6, Elements 25 and 27) having a cathode top face and a cathode bottom face;
a membrane (Figure 6, Elements 23 and 23a) having a membrane top face and a membrane bottom face, with the membrane bottom face attached to the cathode top face, as shown in the annotated Figure below.
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Annotated Figure 6 of Kuroki
Kuroki teaches a subgasket (Figure 6, Elements 30, 32) having a subgasket top face and a subgasket bottom face, with the subgasket bottom face attached to the membrane top face and the subgasket top face attached to the anode bottom face, as shown in the annotated Figure below.
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Annotated Figure 6 of Kuroki
Kuroki teaches a protective barrier (Figure 6, Elements 31, 33, 35, 23a) surrounding a perimeter of the membrane between the subgasket bottom face and the cathode top face, as shown in the annotated Figure below. As the protective barrier of Kuroki shown below is in contact with the edge portions of both the inner and outer sections of the membrane (Elements 23 and 23a) that are in contact with the subgasket bottom face and cathode top face, the protective barrier is considered to meet the limitation of surrounding the aforementioned perimeter.
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Annotated Figure 6 of Kuroki
The limitation of the protective barrier “configured for protecting the membrane against external contaminants” defines the protective barrier by what it does, rather than what it is. This is a functional limitation, and therefore was evaluated in conjunction with the remainder of the instant claim. See MPEP 2173.05(g). Kuroki teaches the claimed structure as stated in the above rejection, particularly as seen in the annotated Figures wherein the protective barrier surrounds at least a portion of the membrane so it is not exposed to the environment outside of the MEA, and therefore would be capable of performing in the manner claimed.
Regarding claim 7, Kuroki teaches the protected MEA according to claim 1, wherein:
a side perimeter portion of the membrane forms at least a portion of the protective barrier (Figure 6, Element 23a).
Regarding claim 8, Kuroki teaches the protected MEA according to claim 7, wherein:
the side perimeter portion corresponds with an outer band of the membrane offset with a channel from an inner portion of the membrane, as seen in the annotated Figure below.
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Annotated Figure 6 of Kuroki
Regarding claim 9, Kuroki teaches the protected MEA according to claim 8.
Kuroki teaches the channel in the embodiment of the disclosure exemplified by Figure 6 above comprising liquid rubber cured material such as silicone rubber, an EPDM, an FKM or the like (Paragraph 0104).
Kuroki teaches that it is preferable for the electrolyte membrane to be made of a high polymer electrolyte (Paragraph 0023).
Thus, Kuroki teaches that the material comprising the membrane is not the same as the material comprising the channel. Further, as exemplified in the Figure above, Kuroki teaches the membrane of the disclosure as separate entity from the channel. For these reasons, Kuroki is considered to teach the instant limitation of the channel being devoid of a material comprising the membrane.
Regarding claim 10, Kuroki teaches the protected MEA according to claim 8.
The limitation of the instant claim reciting “the channel is formed by removing a segment of the membrane after the membrane has been attached to the cathode GDE layer” is a product by process limitation. It is noted that “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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”.
Further, “the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, See MPEP 2113.
The structure resulting from “the channel is formed by removing a segment of the membrane after the membrane has been attached to the cathode GDE layer”, as claimed, is an outer periphery portion of the membrane offset from an inner periphery portion of the membrane, forming a channel between the outer periphery portion and the inner periphery portion.
Kuroki teaches through holes in the electrolyte membrane which define an inner portion and a peripheral edge portion of the membrane which reads on the structural limitations of the claim. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because a channel is formed between an inner and outer membrane portion of the MEA.
Regarding claim 11, Kuroki teaches the protected MEA according to claim 10, wherein:
As discussed above, the limitation of claim 10 directed toward “the channel is formed by removing a segment of the membrane after the membrane has been attached to the cathode GDE layer” is a method limitation and does not determine the patentability of the product, unless the method produces structural features of the product.
Thus, the instant claim limitations directed toward “the segment is removed from the membrane as part of a laser ablation process or a die cutting process” are also considered method limitations because they are directed toward the segment which is removed as described above. Thus, the instant claim is also considered a product by process claim, as it further limits the method disclosed in claim 10.
As discussed above, Kuroki teaches the structure resulting from the method of removing the segment, as described above, including an outer periphery portion of the membrane offset from an inner periphery portion of the membrane, forming a channel between the outer periphery portion and the inner periphery portion.
Thus, the teachings of Kuroki read on the structural limitations of the claim.
Regarding claim 17, Kuroki teaches a protected membrane electrode assembly (MEA) for a fuel cell (Paragraphs 0040-0048), comprising:
a first gas diffusion electrode (GDE) layer (Figure 6, Elements 25 and 27) and a second GDE layer (Figure 6, Elements 24 and 26);
a subgasket (Figure 6, Elements 30, 31);
a membrane (Figure 6, Elements 23, 23a) sandwiched between first and second GDE layers and at least a surrounding subgasket portion of the subgasket; and
a protective barrier (Figure 6, Elements 32, 33, 34, 35) surrounding a perimeter of the membrane between the surrounding subgasket portion and the second GDE layer, as seen in the annotated Figure below.
As the protective barrier of Kuroki shown below is in contact with the edge portions of both the inner and outer sections of the membrane (Elements 23 and 23a) that are in contact with the subgasket portion and second GDE alyer, the protective barrier is considered to meet the limitation of surrounding the aforementioned perimeter.
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Annotated Figure 6 of Kuroki
The limitation of the protective barrier “configured for protecting the membrane against external contaminants” defines the protective barrier by what it does, rather than what it is. This is a functional limitation, and therefore was evaluated in conjunction with the remainder of the instant claim. See MPEP 2173.05(g). Kuroki teaches the claimed structure as stated in the above rejection, particularly as seen in the annotated Figures wherein the protective barrier surrounds at least a portion of the membrane so it is not exposed to the environment outside of the MEA, and therefore would be capable of performing in the manner claimed.
Regarding claim 19, Kuroki teaches the protected MEA according to claim 17, wherein:
the protective barrier is formed with a channel shaped to divided the membrane into an outer membrane band and an inner membrane portion, as seen in the annotated Figure below.
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Annotated Figure 6 of Kuroki
Regarding claim 20, Kuroki teaches the protected MEA according to claim 17, wherein:
The limitation of the instant claim reciting “the protective barrier is formed by removing a portion of the membrane” is a product by process limitation. It is noted that “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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process”.
Further, “the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, See MPEP 2113.
The structure resulting from “the protective barrier is formed by removing a portion of the membrane”, as claimed, is at least some portion of the protective barrier made up of an outer periphery portion of the membrane offset from an inner periphery portion of the membrane, forming a channel between the outer periphery portion and the inner periphery portion.
Kuroki teaches through holes in the electrolyte membrane which define an inner portion and a peripheral edge portion of the membrane which reads on the structural limitations of the claim. Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed method because a channel is formed between an inner and outer membrane portion of the MEA, with the outer portion of the membrane forming part of the structure of the protective barrier.
Claim Rejections - 35 USC § 102(a)(2)
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)(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.
Claims 17-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Takaaki (W.O. 2024202866 A1).
Regarding claim 17, Takaaki teaches a protected membrane electrode assembly (MEA) for a fuel cell (Paragraph 2), comprising:
a first gas diffusion electrode (GDE) layer (Figures 3-4, Element 24) and a second GDE layer (Figures 3-4, Element 25) (Paragraph 5);
a subgasket (Figures 3-4; Element 21) (Paragraph 25);
a membrane (Figures 3-4; Element 23) (Paragraph 27) sandwiched between first and second GDE layers and at least a surrounding subgasket portion of the subgasket; and
a protective barrier (Figures 3-4; Elements SP1 and SP2, 213 and 214) surrounding a perimeter of the membrane between the surrounding subgasket portion and the second GDE layer, as seen in the annotated Figure below.
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Annotated Figure 2 of Takaaki
The limitation of the protective barrier “configured for protecting the membrane against external contaminants” defines the protective barrier by what it does, rather than what it is. This is a functional limitation, and therefore was evaluated in conjunction with the remainder of the instant claim. See MPEP 2173.05(g). Kuroki teaches the claimed structure as stated in the above rejection, particularly as seen in the annotated Figures wherein the protective barrier surrounds at least a portion of the membrane, and therefore would be capable of performing in the manner claimed.
Regarding claim 18, Takaaki teaches the protected MEA according to claim 17, wherein:
the protective barrier is formed with a bent portion of the second GDE layer. As is seen in the above annotated Figure, Takaaki teaches the gas diffusion electrodes, electrodes 24 and 25, are bent in order to establish the spaces SP1 and SP2 (Paragraphs 30-31), equated with the instant protective barrier. Thus, Kuroki is considered to teach the instant claimed limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA A JONES whose telephone number is (571)272-1718. The examiner can normally be reached Mon-Fri 7:30 AM - 4:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at (571) 270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/O.A.J./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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