DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
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 2, 6, 9, 10, 12, and 15 – 19 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 pre-AIA the applicant regards as the invention.
Claim 2 (and, by dependency, claims 9, 10, 12, 15 and 19) recites the limitation "the two aligning elements". There is insufficient antecedent basis for this limitation in the claim. Claim 1 never calls out specifically ‘two alignment elements’, so there is some confusion as to which two elements are being further limited. The Examiner believes the intent is that any two alignment elements that fall along their respective straight line are the ones attempting to be further limited, but the present claim is not clear (i.e. is it the ‘respective parts’ of the alignment elements? Or the other two of the four corresponding parts?). See also the following 112(b) rejection on ‘the respective straight line’.
Claim 2 (and, by dependency, claims 9, 10, 12, 15 and 19) recites the limitation "the respective straight line". There is insufficient antecedent basis for this limitation in the claim. Claim 1 never calls out specifically ‘a’ respective straight line, so there is some confusion as to which straight line(s?) are being further limited. The Examiner believes the intent is that any two alignment elements that fall along their respective straight line are the ones attempting to be further limited, but the present claim is not clear. See also the prior 112(b) rejection on ‘two aligning elements’. For the purpose of evaluating the prior art, the Examiner has allowed for any two alignment elements to meet this claimed limitation (as a straight line can always be drawn between any two elements).
Regarding claim 6 (and, by dependency, claims 15 – 18), the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. This is similar to the use of the phrase ‘for example’; e.g. see MPEP § 2173.05(d). For the purpose of evaluating the prior art, the limitations after ‘preferably’ have been taken as optional.
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.
(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.
(g)(1) During the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
A rejection on this statutory basis (35 U.S.C. 102(g) as in force on March 15, 2013) is appropriate in an application or patent that is examined under the first to file provisions of the AIA if it also contains or contained at any time (1) a claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that is before March 16, 2013 or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains or contained at any time such a claim.
Claims 1 – 4 and 8 – 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IDS reference DAIMLER AG (DE 102013020840 A1).
The Examiner notes that this is a substantial duplicate of the rejection set forth in the ISR/Written Opinion by the EPO.
Regarding claim 1, DAIMLER AG discloses a bipolar plate for a fuel cell comprising two plate halves (anode plate 1.1, cathode plate 1.2) with surfaces and orienting elements which face one another (cf. the channel- shaped depressions and elevations in the sealing regions around the media outlets and inlets, in the region of said surfaces, which have elevations (E) with a height (H) and corresponding depressions (V) with a depth (T)).
All the elevations (E) and corresponding depressions (V) have a greater extent in a longitudinal direction (L) than in a transverse direction (Q), since the sealing channels are rectangular. Four of the corresponding parts of the orienting elements are arranged on each of the surfaces, of which parts in each case two lie on a common straight line and are oriented with the same orientation (cf. the rectangular sealing grooves around the media inlets on the upper and lower edge of the bipolar plate in figure 1).
It is moot for the assessment of novelty that further sealing grooves, arranged on the side edges, also have more than four parts (orienting elements). The longitudinal direction (L) of the two orienting elements with the same orientation runs along the respective straight line. At least one of the straight lines does not coincide with a line of symmetry between the external dimensions of the respective plate half. At least one of the straight lines is spaced apart from the line of symmetry (S) in parallel by less than twice the dimensions (L1, L2) of the orienting elements in the longitudinal direction (L) (See Figures and citations above).
Regarding claims 2, 3 and 9, the elevations (E) and depressions (V) have the same shape, wherein the elevations are of smaller configuration in the longitudinal direction (L), transverse direction and vertically than the corresponding dimensions of the depressions.
Regarding claims 4, 10 and 11, those faces of the elevation (E) which run transversely with respect to the surface run at the same angle with respect to the surface as the corresponding faces of the depression (V).
Regarding claim 8, the orienting elements are arranged between the flow-conducting regions and an outer edge of the respective plate half.
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 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.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Regarding numbers (1), (2) and (4), see the rejection(s) provided below. Regarding the level of ordinary skill in the art, the general level of skill is taken as a highly skilled technician having at least a BS, MS, or PhD in the relevant field and 3-5 years experience.
Claims 1 – 4 and 8 - 11 rejected under 35 U.S.C. 103(a) as being unpatentable over IDS reference to Sugita et al. (JP 2003-197222 A and English Language Equivalent, U.S. Patent App. No. 2003/0129466 A1)
The Examiner notes that this is a substantial duplicate of the rejection set forth in the ISR/Written Opinion by the EPO.
Regarding claim 1, Sugita et al. discloses a bipolar plate for a fuel cell comprising two plate halves (elements 4 and 5) with surfaces and orienting elements (elements 29A,B, 30A,B, 31A,B, 32A,B, 34A,B, 35A,B) which face one another in the region of said surfaces, which have elevations ("convex portions") with a height (H) and corresponding depressions ("concave portions") with a depth (T). All the elevations and corresponding depressions have a greater extent in a longitudinal direction (L) than in a transverse direction (Q) (cf. figures 1, 2 and 4-6).
Four of the corresponding parts of the orienting elements are arranged on each of the surfaces, of which parts in each case two lie on a common straight line and are oriented with the same orientation. The longitudinal direction (L) of the two orienting elements with the same orientation runs along the respective straight line. At least one of the straight lines does not coincide with a line of symmetry between the external dimensions of the respective plate half. The elevations and depressions have the same shape, wherein the elevations are of smaller configuration in the longitudinal direction (L), transverse direction and vertically than the corresponding dimensions of the depressions (cf. figure 19).
Sugita et al. fails to disclose ensuring that the ‘at least one of the straight lines’ is spaced parallel to the line of symmetry by less than twice the dimensions of the aligning elements in the longitudinal direction.
However, the Examiner deems that it would have been obvious to one having ordinary skill in the art to have determined the optimum value of a results effective variable such as the spacing of the alignment elements meeting the claimed limitations through routine experimentation, especially given the teaching in the prior art regarding using said aligning elements. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Sugita et al. to meet the limitations of claim 1 as taught by Sugita et al., as it seems to be simply routine optimization of where to place these alignment marks, which would have been well within the knowledge of a person of ordinary skill in the art (i.e. they would need to be outside the flow region and still convey the alignment benefits without being in a position that impacts the performance of the bipolar half plates).
Regarding claims 2, 3 and 9, the extent of the longer elements (for example, 30A, 32A, 34A) in the transverse direction (Q) is less than one third of the extent in the longitudinal direction (L), wherein the height (H) and depth (T) are less than half the extend in the transverse direction (Q) (cf. figure 19).
Regarding claims 4, 10 and 11, those faces of the elevation which run transversely with respect to the surface run at the same angle with respect to the surface as the corresponding faces of the depression (cf. figure 19).
Regarding claim 8, the orienting elements are arranged between the flow-conducting regions and an outer edge of the respective plate half.
Claims 1 – 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Admitted Prior Art (APA).
Regarding claim 1, the APA admits that bipolar half plates having mutually facing surfaces and aligning elements having elevations and depressions are old in the art (see PGPUB of the present Application, Paragraphs 0001 – 0003).
The APA fails to disclose the rest of the specific limitations of claim 1; namely the exact shape, size and location of the aligning elements as claimed.
However, the Examiner fails to see how this conveys patentability to the bipolar half plate as a skilled artisan would be well versed in forming aligning elements in any shape necessary to meet the form and function of the specific bipolar plate. I.e. the aligning elements must serve their function of alignment, while also being in specific, exterior location to avoid detrimentally impacting the performance of the fuel cell. The exact shape and location of these aligning elements seems to be arbitrary and routine; i.e. optimizations well within the knowledge base of a person of ordinary skill in the art. Applicants are invited to present evidence as to why the exact location and shape of the aligning marks are non-obvious or non-equivalent, but presently no such evidence exists on the record.
Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results or non-obviousness must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner’s position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of the APA to meet the limitations of claim 1, as such modification appears to be nothing more than routine optimization of the size, shape and location of known, aligning elements.
Regarding claim 2, as above, these limitations are additional, nominal aspects of the size, shape and location of the aligning elements.
Regarding claims 3 and 9, since the elevations must fit into the depressions, these limitations seem routine and obvious, since -if the elevations had a larger size, height, etc., they would not fit into the corresponding depression.
Regarding claims 4, 10 and 11, as above, these limitations are additional, nominal aspects of the size, shape and location of the aligning elements.
Regarding claims 5, 6 and 12 – 18, as above, these limitations are additional, nominal aspects of the size, shape and location of the aligning elements. The Examiner also takes Official Notice that sizes in the 2 – 10 mm range are known in the art1.
Regarding claims 7, 19 and 20, the Examiner takes Official Notice that forming the plate halves to meet the claimed limitations are known and conventional in the art2.
Regarding claim 8, as above, these limitations are additional, nominal aspects of the size, shape and location of the aligning elements. The Examiner also notes that this would appear to be conventional and obvious, as the aligning elements would be located outside the active area of the fuel cell to avoid detrimentally impacting the fuel cell performance.
Claims 5, 6 and 12 – 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over DAIMLER AG as applied above, and further in view of DE 102009036039 B4 (reference D4 in the EPO Written Opinion)
DAIMLER AG is relied upon as described above.
Regarding claims 5 and 6, DAIMLER AG fails to disclose the specific size limitations as claimed.
However, DE ‘039 B4 discloses separator plates with elevations and depressions which engage into one another and can be elongate, (cf. figure 4c or 5g). The size of the elevations and depressions lies in the range of 4-15 mm, (paragraph 63).
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to determine an amount of extensions in the traverse direction and longitudinal direction meeting applicants’ claimed limitations by optimizing the results effective variable through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of DAIMLER AG to meet the claimed extension amounts as taught by DE ‘039 B4, as such values are routine optimizations known to a person of ordinary skill in the art.
Regarding claims 12 – 18, these limitations are met for the reasons set forth above.
Claims 5, 6 and 12 – 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sugita et al. as applied above, and further in view of DE 102009036039 B4 (reference D4 in the EPO Written Opinion)
Sugita et al. is relied upon as described above.
Regarding claims 5 and 6, Sugita et al. fails to disclose the specific size limitations as claimed.
However, DE ‘039 B4 discloses separator plates with elevations and depressions which engage into one another and can be elongate, (cf. figure 4c or 5g). The size of the elevations and depressions lies in the range of 4-15 mm, (paragraph 63).
Therefore, the Examiner deems that it would have been obvious to one having ordinary skill in the art to determine an amount of extensions in the traverse direction and longitudinal direction meeting applicants’ claimed limitations by optimizing the results effective variable through routine experimentation. In re Boesch, 205 USPQ 215 (CCPA 1980); In re Geisler, 116 F. 3d 1465, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Aller, 220 F.2d, 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Sugita et al. to meet the claimed extension amounts as taught by DE ‘039 B4, as such values are routine optimizations known to a person of ordinary skill in the art.
Regarding claims 12 – 18, these limitations are met for the reasons set forth above.
Claims 7, 19 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over DAIMLER AG as applied above, and further in view of DE 102020007731 A1 (reference D3 in the EPO Written Opinion)
DAIMLER AG is relied upon as described above.
Regarding claim 7, DAIMLER AG fails to disclose the specific material of the plate halves.
However, DE ‘731 A1 discloses separator plate halves which are configured from a carbon-containing material arranged distributed in a plastic matrix as routine prior art (see, for example, paragraph 37).
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, various materials to form/make the bipolar half plates, including the claimed carbon-containing material and plastic matrix, are functional equivalents in the field of known means to form bipolar half plates. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of DAIMLER AG to meet the claimed material limitations as taught by DE ‘731 A1, as such materials are known equivalent materials for forming bipolar half plates.
Regarding claims 19 and 20, these limitations are met for the reasons set forth above.
Claims 7, 19 and 20 are rejected under 35 U.S.C. 103(a) as being unpatentable over Sugita et al. as applied above, and further in view of DE 102020007731 A1 (reference D3 in the EPO Written Opinion)
Sugita et al. is relied upon as described above.
Regarding claim 7, Sugita et al. fails to disclose the specific material of the plate halves.
However, DE ‘731 A1 discloses separator plate halves which are configured from a carbon-containing material arranged distributed in a plastic matrix as routine prior art (see, for example, paragraph 37).
Substitution of functional equivalents requires no express motivation as long as the prior art recognizes the functional equivalency. In the instant case, various materials to form/make the bipolar half plates, including the claimed carbon-containing material and plastic matrix, are functional equivalents in the field of known means to form bipolar half plates. In re Fount 213 USPQ 532 (CCPA 1982); In re Siebentritt 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co. 85 USPQ 328 (USSC 1950).
It would therefore have been obvious to one of ordinary skill in the art at the time of the Applicants’ invention to modify the device of Sugita et al. to meet the claimed material limitations as taught by DE ‘731 A1, as such materials are known equivalent materials for forming bipolar half plates.
Regarding claims 19 and 20, these limitations are met for the reasons set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
August 1, 2026
1 For support of the Examiner’s position of Official Notice, see rejections below on these claims and reference D4 on the EPO Written Opinion.
2 For support of the Examiner’s position of Official Notice, see rejections below on these claims and reference D3 on the EPO Written Opinion.
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