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 .
Claim Objections
Claim 4 is objected to because of the following informalities. Appropriate correction is required.
The following is a quotation of 37 C.F.R. § 1.121(c) which forms the basis of this objection:
(c) Claims. Amendments to a claim must be made by rewriting the entire claim with all changes (e.g., additions and deletions) as indicated in this subsection, except when the claim is being canceled. Each amendment document that includes a change to an existing claim, cancellation of an existing claim or addition of a new claim, must include a complete listing of all claims ever presented, including the text of all pending and withdrawn claims, in the application. The claim listing, including the text of the claims, in the amendment document will serve to replace all prior versions of the claims, in the application. In the claim listing, the status of every claim must be indicated after its claim number by using one of the following identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
Claim 4 is objected to under 37 C.F.R. § 1.121 for failing to indicate the status.
4. Claim(s) 4 is not listed and does not indicate the status of each claim and are therefore objected to.
It appears that this claim was intended to be canceled due to the previous claim 4 being incorporated into claim 1. This is how claim 4 will be treated.
Claim Rejections - 35 U.S.C. § 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 of this title, 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.
Claims 1, 5, 7-9 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee et al., U.S. Patent App. Pub. No. 2008/0318114 A1 [hereinafter Lee] in view of Jeong et al., KR 20130007355 A, Sato et al., U.S. Patent App. Pub. No. 2010/0151358 A1 [hereinafter Sato], Nishida et al., U.S. Patent No. 6,660,419 B1 [hereinafter Nishida], and Kaminaka et al., U.S. Patent App. Pub. No. 2011/0250522 A1 [hereinafter Kaminaka]. A machine translation was used for Jeong et al. [hereinafter Jeong].
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. The following references render this claim obvious.
I. Lee
An anode-side separator (separator which can be used on the anode-side; Lee title, abstract) …, the anode-side separator comprising:
a metal backing made of titanium or stainless steel (separator 100 comprising titanium; Lee [0047]-[0053], figs. 5A-5B);
an electroconductive oxide film provided on a surface of the metal backing, the electroconductive oxide film containing indium tin oxide (coating with indium doped tin oxide layering; id.); and
a noble metal film provided on a surface of the electroconductive oxide film, the noble metal film containing [metal] (multi-layered structure having at least two layers and another layer may include a gold topcoating; id.)… .
The “that is used in a water electrolysis device” recitation is intended use. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. MPEP § 2114. Because the cited prior art teaches the structural limitations of the claim, the prior art is also structurally capable of performing the claimed intentions and therefore reads on the claimed language. See id.
Furthermore, it is obvious to try. Thus it would have been obvious for a person having ordinary skill in the art to have tried and eventually selected the combination of indium tin oxide with a gold topcoat out of the finite number of different combinations of materials with a reasonable expectation of success.
II. Platinum - Jeong
Lee is silent on platinum.
However, Lee teaches gold.
Jeong teaches that gold and platinum may be used as coating materials on a separator. Jeong abstract, p. 6 paras. 1-3, claim 3.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the aforementioned prior art’s gold with Jeong’s platinum to yield the predictable result of having a suitable separator coating.
III. Noble Metal Thickness – Sato
Lee is silent on wherein the thickness of the noble metal film is 3 nm or more and 5 nm or less.
However, Sato teaches having a platinum thickness of at least 2 nm, preferable 3 nm or more to avoid an excessive number of pinholes. Sato abstract, [0075]-[0078].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s thickness to be Sato’s at least 2, preferably 3 nm or more to avoid an excessive number of pinholes.
IV. Oxide Film Thickness – Nishida
Lee is silent on wherein a thickness of the electroconductive oxide film is 0.05 µm or more and 0.8 µm or less.
However, Nishida teaches that the thickness of indium-doped tin oxide of 0.05-5 micrometers to be a suitable thickness for indium-doped tin oxide. Nishida col. 4 ll. 35-45.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s indium tin oxide to be Nishida’s 0.05-5 micrometers to yield the predictable result of having a suitable thickness for an indium tin oxide layer.
V. Surface Roughness – Kaminaka
Lee is silent on wherein a surface roughness of the metal backing is in a range of 0.05-0.8 micrometers.
However, Kaminaka teaches a surface roughness of at least 0.1 micrometers increases the adhesion of layers on a stainless steel separator. Kaminaka [0176].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s roughness to be at least 0.1 micrometers to increase the adhesion of layers on the separator.
5. The anode-side separator according to claim 1, wherein the thickness of the electroconductive oxide film is 0.3 microns or more and 0.8 microns or less (rejected for similar reasons stated in the claim 1 rejection).
7. The anode-side separator according to claim 1, wherein the thickness of the electroconductive oxide film is 0.1 microns (rejected for similar reasons stated in the claim 1 rejection).
8. The anode-side separator according to claim 1, wherein the surface roughness of the metal backing is 0.1 microns or more and 0.8 microns or less (rejected for similar reasons stated in the claim 1 rejection).
9. The anode-side separator according to claim 8, wherein the surface roughness of the metal backing is 0.3 microns or more and 0.8 microns or less (rejected for similar reasons stated in the claim 1 rejection).
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over MacKinnon et al., W.O. Int’l Pub. No. 2014/056110 A1 [hereinafter MacKinnon] in view of Lee, Jeong, Sato, Nishida, and Kaminaka.
6. The following references render this claim obvious.
I. MacKinnon
A water electrolysis device (an apparatus that operates as both an electrolyzer and a fuel cell; MacKinnon p. 7) … .
II. Claim 1’s Separator
MacKinnon is silent on comprising the anode-side separator according to claim 1.
However, Lee teaches the anode-side separator according to claim 1. See claim 1 rejection. Lee teaches that the layers of the separator have corrosion resistance. Lee [0052]. Due to MacKinnon’s teaching that an apparatus can operate as an electrolyzer or fuel cell, a person having ordinary skill in the art would have recognized that Lee in view of Jeong, Sato, Nishida, and Kaminaka’s separator would also work in an electrolyzer. See claim 1 rejection.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the MacKinnon’s electrolyzer with Lee in view of Jeong, Sato, Nishida, and Kaminaka’s separator to yield a separator with corrosion resistance.
Claims 10-11 are rejected under 35 U.S.C. § 103 as being unpatentable over Lee in view of Jeong, Sato, Nishida, and Kaminaka as applied to claim 1 previously, and further in view of Shibuya et al., U.S. Patent App. Pub. No. 2013/0244129 A1 [hereinafter Shibuya].
10. The anode-side separator according to claim 1, wherein a thickness of the metal backing is within the range of 0.1 mm to 1 mm. Lee is silent on this.
However, Shibuya teaches a separator substrate thickness of 0.05-0.3 mm to have enough stiffness for assembly and minimize weight. Shibuya [0037].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s metal backing to be 0.05-0.3 mm to have enough stiffness for assembly and minimize weight.
11. The anode-side separator according to claim 1, wherein the thickness of the electroconductive oxide film is 0.1 microns, a surface roughness of the metal backing is in a range of 0.3 m to 0.8 microns, and a thickness of the metal backing is within the range of 0.1 microns to 1 mm (rejected for similar reasons stated in the claims 1 and 10 rejections).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 5-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/155,931 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they share the same limitations but arranged differently.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument that Nishida is very broad. Remarks p. 5.
The Examiner respectfully submits that Nishida still overlaps the claimed range.
Conclusion
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 Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/HOSUNG CHUNG/Primary Examiner, Art Unit 1794