DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This office action is responsive to the amendment filed on 06/04/26. The applicant has not overcome the 35 USC 112 rejection nor the 102 rejections. Refer to the aforementioned amendment for specific details on applicant's rebuttal arguments and/or remarks. However, the present claims are now finally rejected over new grounds of rejection (including rejections under Section 102/103) as formulated hereinbelow and for the reasons of record:
Election/Restrictions
Applicant’s election without traverse of Group I (i.e., claims 1-24) in the reply filed on 06/09/25 is acknowledged.
Claims 10-11, 14-16 and 20-23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/31/25.
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 1-9, 12-13, 17-19 and 24 are 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.
Regarding claims 1-4 and 17, the term "type(s)" renders the claims indefinite because the claims include elements not actually disclosed (those encompassed by "type"), thereby rendering the scope of the claims unascertainable.
Claim Rejections - 35 USC § 102
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 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 1-9, 12-13, 17-19 and 24 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Pintauro et al 2017/0250431.
As to claims 1-6, 19:
Pintauro et al disclose that it is known in the art to make a multi-fiber/composite dispersion inks (0136) for a fuel cell electrode/membrane electrode assembly (i.e., electrochemically active material) (Abstract; 0027-0028; 0030-0035) comprising a dual/multi-fiber-based material comprising one or more polymers and/or particles, thereby forming a fiber mat which may include multiple types of fibers and may further include particles of a catalyst including Pt particles/alloy particles, Pt on carbon particles, precious metal particles, precious metal on carbon particles, precious metal based alloys, precious metal based alloys on carbon particles , or Ag/Ni/Fe/Pd particles/alloy particles, non-platinum group metal (PGM) or combinations thereof (0013-0015; 0022; 0018-0021, 0091; 0105-0106; Abstract; 0006; 0016-0025; 0030-0035). Pintauro et al disclose polymer binders (0016; 0023). Figures 13 and 18 provide structural illustration of the fiber-mat including catalyst particles with a binder.
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1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "said fibers are pre-formed fibers" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
As to claim 7, 12-13, 17-18:
Pintauro et al teach polymer binders including one of nafion and PVDF (i.e., applicant’s materially undefined ionomer binder polymer with repeating units) (0016; 0023; 0025). Pintauro et al disclose the use of more than one polymer (examiner’s note: these additional polymers are taken to represent applicant’s materially undefined polymer dispersant and carrier polymer) (Abstract; 0013-0014; 0016; 0018; 0023; 0027; 0030-0038; 0041; 0089-0092; see Claims 1-2, 5, 9, 14, 22, 25, 27-29). Pintauro et al teach carrier polymers (0131) such as poly(acrylic acid)(PAA) (0062-0064; 0122; 0124; see Table 1) and polyethylene oxide (PEO) (0119-0121; see Example ONE)
As to claims 8-9:
Pintauro et al teach inks/dispersions containing alcohol/water solvents (0136).
As to claim 24:
Pintauro et al disclose spinning and/or electrospinning techniques (0057-0058; 0088; 0112-0113; FIGURE 7) and/or that the fibers are electrospun fibers, thereby implicitly formed by electrospinning (0006).
Therefore, the claims are anticipated by Pintauro et al. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
(at least) Claims 1-6 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the publication CN 109860630 (herein called CN’630).
As to claims 1-6:
CN’630 discloses that it is known in the art to make a multi-fiber/composite dispersion inks for fuel cells and fuel cell polymer membranes (i.e., electrochemically active material) comprising polymer nanofiber catalyst slurry wherein the Pt/C catalyst is dispersed on the surface of the polymer nanofibers (Abstract; 0002-0006; 0020-0025).
1st Examiner's note: it is noted that the instant claims are being construed as product-by-process claims (i.e. the method limitation "said fibers are pre-formed fibers" has not been given patentable weight) and that the product itself does not depend on the process of making it. Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Therefore, the claims are anticipated by CN’630. However, if the claims are not anticipated the claims are obvious as it has been held similar products claimed in product-by-process limitations are obvious. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974); See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
Response to Arguments
Applicant’s arguments with respect to independent claim 1 (particularly, the new limitation “said fibers are pre-formed fibers) have been considered but are moot in view of the new grounds of rejection, and because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
For the reasons of record, the limitation "said fibers are pre-formed fibers" is being construed as a product-by-process claim and has not been given patentable weight because the product itself does not depend on the process of making it (i.e., being pre-formed or not). Accordingly, in a product-by-process claim, the patentability of a product does not depend on its method of production. In that, it is further noted that the product in the instant claims is the same as or obvious over the product of the prior art. In re Thorpe 777 F.2d 695, 698, 227 USPQ 964,966 (Fed Cir. 1985) and MPEP 2113. As a result, the process steps of a product-by-process claim do not impart any significant property or structure to the claimed end product. And, if there is any difference, the difference would have been minor and obvious. Therefore, the present claims are unpatentable over a reference that satisfies the claimed compositional or physical or property or structural limitations, and/or a reference that discloses a product made by a process that reasonably substantially comprises every limitation of the claimed process. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972) and In re Fessmann, 489 F.2d 742, 744 180 USPQ 324, 326 (CCPA 1974);See also In re Best, 195 USPQ 430 (CCPA 1977) [prove that prior art products do not necessarily or inherently possess characteristics] & Ex parte Gray, 10 USPQ2d 1922 (BPAI 1989) [needs to show that the claimed process imparts unexpected property or structure](Refer to MPEP 2113: Product-by-Process Claims).
With respect to the term “type”, the same is still deemed indefinite and problematic for clearly defining and/or setting forth the specific constituents, components, elements, materials or composition(s) of the particle and fiber at issue; and the as-filed specification does not appear to provide adequate descriptive basis to ascertain such specific constituents, components, elements, materials or composition(s).
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 RAYMOND ALEJANDRO whose telephone number is (571)272-1282. The examiner can normally be reached Monday-Thursday (8:00 am-6:30 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas A. Smith can be reached on (571) 272-8760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RAYMOND ALEJANDRO/
Primary Examiner
Art Unit 1752
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