CTNF 18/553,053 CTNF 91725 DETAILED ACTION 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. Priority 02-27 AIA Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. CN2021103715345 , filed on 4/7/2021 . Claim Rejections - 35 USC § 112 07-36 AIA The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 07-36-01 AIA Claim s 5-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites, the method further comprising “making the bipolar plate from the base material after using the carboxylic acid solution to treat the surface of the base material of the bipolar plate and rubbing with graphite.” However, the instant limitation does not further limit the scope of claim 1 because it fails to recite an active method step by limiting the method of manufacturing the bipolar plate. Claim 6 is similarly rejected for including the subject matter of claim 5 . Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim (s) 1-5 and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaminaka (US20110250522A1) and Saito (US6348279B1), as evidenced by Zhang ( “Plasma and chromic acid treatments of polycarbonate surface to improve coating–substrate adhesion” – NPL copy provided herein) . Regarding Claim 1 , Kaminaka discloses method for manufacturing a bipolar plate (separator/bipolar plate 5 ) for a fuel cell 1 [pars. 0005,0083; Fig. 3], comprising: using nonoxiding acid solution to treat a surface of a base material or body of the bipolar plate such that a microstructure with a certain roughness forms on the surface [pars. 0110-111,0117- 118,0176] {Note that acid immersion necessarily imparts surface roughness which is considered to read on formation of a microstructure} ; and rubbing the surface with graphite [par. 0151]. Kaminaka fails to disclose: (1) wherein the nonoxidizing acid solution is a carboxylic acid solution; and (2) rubbing the surface with graphite would result in fragments of the graphite fill the microstructure and bind to carboxyl groups in the microstructure. Pertaining (1) , Kaminaka discloses, by example, immersion of the base material/body (stainless steel) in nonoxidizing acid solution (e.g., 25 vol% sulfuric acid, which computes to about 38% by weight) for a matter of 30 seconds at a temperature of 60 o C to induce surface roughness of 0.24-0.38 μm (i.e., Test Samples 10-14) prior to rubbing with graphite (sliding with graphite to form a graphite layer) [pars. 0249-259; Tables 3, 4 and 5]. Saito, from the same field of endeavor, teaches a method of manufacturing a bipolar plate (separator) in which a base material or body of the bipolar plate is treated in an acidic solution to obtain a surface roughness Ra of 0.1-10 μm, wherein the acidic solution may include sulfuric acid, acetic acid or formic acid (i.e., three non-oxidizing acids), where the concentration by weight of the acidic solution may be from 20 to 100% and time of immersion may be one minute or more, determined depending upon the separator material used and the desired surface roughness of the separator [Saito – C1:L47-C2L:34,C4:L35-57]. Therefore, before the effective filing date of the claimed invention, it would have been obvious for an ordinary skilled artisan to have employed the teachings of Saito to have modified the method of Kaminaka to have used a carboxylic acid including acetic acid or formic acid as the carboxylic acid solutions as well-known alternatives to sulfuric acid in the art for surface treating the base material or body of the bipolar plate in order to obtain a desired surface roughness, with a reasonable expectation of success. Pertaining (2) , Zhang, from a similar problem solving area of surface treating a substrate with a chromic acid solution, teaches that upon treatment, carboxy functional groups are formed on the surface of the substrate to improve coating-substrate adhesion properties [Zhang – Abstract; Introduction]. An ordinary skilled artisan would readily appreciate that the bipolar plate of modified Kaminaka necessarily includes, after the carboxylic acid solution treatment, carboxy groups in the microstructure such that, upon rubbing, fragments of the graphite fill the microstructure and bind to carboxyl groups in the microstructure. Regarding Claim 2 , modified Kaminaka teaches wherein the carboxylic acid solution is an aqueous solution of formic acid or acetic acid, and wherein the weight percentage concentration of the carboxylic acid solution is in the range of 20 to 100%, which overlaps the claimed range of 5-60% and may be further be optimized to be within the claimed range in order to obtain a desired surface roughness of between 0.1-10 μm, without undue experimentation and with a reasonable expectation of success [Saito – C4:L35-57; MPEP 2144.05(II)]. Regarding Claim 3 , modified Kaminaka teaches wherein the average value of the roughness of the surface is greater than or equal to 0.1 microns (e.g., 0.24-0.38 μm for Test Samples 10-14) [Kaminaka – pars. 0249-259; Tables 3, 4 and 5], or 0.1-10 μm [Saito - C4:L35-57]. Regarding Claim 4 , Kaminaka discloses wherein the graphite is made into one of a graphite block, a graphite rod and a graphite wheel [par. 0195], and the rubbing step includes sliding or rolling the graphite against the surface of the base material or body of the bipolar plate [par. 0169-171]. Regarding Claim 5 , modified Kaminaka discloses making the bipolar plate from the base material after using the carboxylic acid solution to treat the surface of the base material of the bipolar plate and rubbing with graphite [Kaminaka – pars. 0156-157]. Regarding Claim 7 , Kaminaka discloses wherein the carboxylic acid solution and the surface of the base material or body of the bipolar plate undergo a reaction for 30 seconds or 60 seconds, which falls within the claimed range of 10-200 seconds, and at a temperature of 60 o C, which falls within the claimed range of 20° C.-70° C [pars. 0249-259; Tables 3, 4 and 5]. Regarding Claim 8 , Kaminka fails to explicitly teach the method further comprising drying the treated surface of the base material or body of the bipolar plate within a temperature range of 20° C.-100° C. However, by a similar example, Kaminaka discloses washing and drying after the acid treatment in an oven at 70 o C [par. 0208]. Therefore, before the effective filing date of the claimed invention, it would have been obvious for an ordinary skilled artisan to have employed the teachings of Saito to have further modified the method of Kaminaka wherein the method further comprises drying the treated surface of the base material or body of the bipolar plate within a temperature range of 20° C.-100° C, without undue experimentation and with a reasonable expectation of success. Claim 9 , Kaminka discloses a bipolar plate (separator/bipolar plate 5 ) for a fuel cell 1 [pars. 0005,0083; Fig. 1,3], comprising: a body; and a carbon (graphite) coating [par. 0151], wherein a surface of the body has a microstructure with a certain roughness that is formed by treatment with a nonoxidizing acid solution [pars. 0110-111,0117-118,0176] {Note that acid immersion necessarily imparts surface roughness which is considered to read on formation of a microstructure}. Kaminaka fails to disclose: (1) wherein the nonoxidizing acid solution is a carboxylic acid solution; and (2) wherein the carbon coating is bound to the body via carboxyl groups in the microstructure. Pertaining (1) , Kaminaka discloses, by example, immersion of the base material/body (stainless steel) in nonoxidizing acid solution (e.g., 25 vol% sulfuric acid, which computes to about 38% by weight) for a matter of 30 seconds at a temperature of 60 o C to induce surface roughness of 0.24-0.38 μm (i.e., Test Samples 10-14) prior to rubbing with graphite (sliding with graphite to form a graphite layer) [pars. 0249-259; Tables 3, 4 and 5]. Saito, from the same field of endeavor, teaches a method of manufacturing a bipolar plate (separator) in which a base material or body of the bipolar plate is treated in an acidic solution to obtain a surface roughness Ra of 0.1-10 μm, wherein the acidic solution may include sulfuric acid, acetic acid or formic acid (i.e., three non-oxidizing acids), where the concentration by weight of the acidic solution may be from 20 to 100% and time of immersion may be one minute or more, determined depending upon the separator material used and the desired surface roughness of the separator [Saito – C1:L47-C2L:34,C4:L35-57]. Therefore, before the effective filing date of the claimed invention, it would have been obvious for an ordinary skilled artisan to have employed the teachings of Saito to have modified the bipolar plate of Kaminaka to have used a carboxylic acid including acetic acid or formic acid as the carboxylic acid solutions as well-known alternatives to sulfuric acid in the art for surface treating the base material or body of the bipolar plate in order to obtain a desired surface roughness, with a reasonable expectation of success. Pertaining (2) , Zhang, from a similar problem solving area of surface treating a substrate with a chromic acid solution, teaches that upon treatment, carboxy functional groups are formed on the surface of the substrate to improve coating-substrate adhesion properties [Zhang – Abstract; Introduction]. An ordinary skilled artisan would readily appreciate that the bipolar plate of modified Kaminaka necessarily includes, after the carboxylic acid solution treatment, carboxy groups in the microstructure such that, upon rubbing, fragments of the graphite fill the microstructure and bind to carboxyl groups in the microstructure . 07-22-aia AIA Claim (s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaminaka, Saito, and Zhang , as applied to claim 1 above, and further in view of Hampden-Smith (US20050221139A1) and Tsuruda (US20180198152A1) . Regarding Claim 5-6 , modified Kaminaka fails to explicitly teach the method further comprising covering a part of the surface of the body of the bipolar plate with a protective layer before using the carboxylic acid solution to treat the surface of the body of the bipolar plate in order to expose a rib on the surface of the body of the bipolar plate, wherein the protective layer is one of polyimide, polyamide and polyester. However, Hampden-Smith, from the same field of endeavor, teaches that when only a portion of the surface body of a bipolar plate is chemically modified by immersion, a polymer mask may be utilized on the surface and removed after the treatment [Hampden-Smith – pars. 0140-141; Fig. 9], and Tsuruda, also from the same field of endeavor, teaches such a mask being formed of polyimide specifically utilized in acid aqueous solution immersions [Tsuruda – par. 0099]. Therefore, before the effective filing date of the claimed invention, it would have been obvious for an ordinary skilled artisan to have employed the teachings of Hampden-Smith and Tsuruda to have further modified the method of Kaminaka to have comprised covering a part of the surface of the body of the bipolar plate with a protective layer before using the carboxylic acid solution to treat the surface of the body of the bipolar plate in order to expose a rib on the surface of the body of the bipolar plate, wherein the protective layer is one of polyimide, polyamide and polyester. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAROON S SHEIKH whose telephone number is (571)270-0302. The examiner can normally be reached 9-6. 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, JONATHAN LEONG can be reached at (571) 270-1292. 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. HAROON S. SHEIKH Primary Examiner Art Unit 1751 /Haroon S. Sheikh/Primary Examiner, Art Unit 1751 Application/Control Number: 18/553,053 Page 2 Art Unit: 1751 Application/Control Number: 18/553,053 Page 3 Art Unit: 1751 Application/Control Number: 18/553,053 Page 4 Art Unit: 1751 Application/Control Number: 18/553,053 Page 5 Art Unit: 1751 Application/Control Number: 18/553,053 Page 6 Art Unit: 1751 Application/Control Number: 18/553,053 Page 7 Art Unit: 1751 Application/Control Number: 18/553,053 Page 8 Art Unit: 1751 Application/Control Number: 18/553,053 Page 9 Art Unit: 1751 Application/Control Number: 18/553,053 Page 10 Art Unit: 1751
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