DETAILED ACTION
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 .
Status of Claims
This action is in response to Applicant’s Request for Reconsideration dated 07/14/2026.
Claim(s) 1-3, 7-18 and 20 are currently pending.
Claim(s) 1, 7, 12-16 and 20 have been amended.
Claim(s) 4-6 and 19 have been canceled.
Response to Arguments
Applicant’s arguments, see Remarks filed 07/14/2026, with respect to the rejection of claims 1, 3, 4, 7, 9-10, 14, 16 and 18-20 under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. have been fully considered and are persuasive. The rejection of claims 1, 3, 4, 7, 9-10, 14, 16 and 18-20 under 35 U.S.C. 102(a)(1) has been withdrawn.
Applicant’s arguments, see Remarks filed 07/14/2026, with respect to the rejection of claims 1-10, 14 and 16-20 under 35 U.S.C. 103 as being unpatentable over Yano et al. in view of Kobayashi et al. have been fully considered and are persuasive. The rejection of claims 1-10, 14 and 16-20 under 35 U.S.C. 103 has been withdrawn.
Examiner notes that the amendments raised new rejections of the claims under 35 U.S.C. 112(b), as set forth above.
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, 3, 7, 17 and 18 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 claim 2
The limitation “wherein the alloy is formed from a tin-nickel alloy” is unclear and therefore renders the claim indefinite. It is unclear if the alloy recited in the instant claim corresponds to the alloy from which the second layer is formed or to the alloy predominantly containing tin of the metal substrate. Appropriate correction and clarification is required.
Regarding claim 3
The limitation “wherein the alloy is formed from a copper-tin alloy or a tin-silver alloy or a tin-zinc alloy or a tin-bismuth alloy or a tin-antimony alloy or a tin-cobalt alloy or a nickel-tungsten alloy or a tin-manganese alloy” is unclear and therefore renders the claim indefinite. It is unclear if the alloy recited in the instant claim corresponds to the alloy from which the second layer is formed or to the alloy predominantly containing tin of the metal substrate. Appropriate correction and clarification is required.
Regarding claim 7
Claim 7 recites “wherein the metal substrate is formed from a material from the group comprising copper, a copper alloy, nickel, a nickel alloy or low-alloy carbon steel.” However, claim 1 requires the metal substrate to be formed from a material from the group comprising stainless steel, titanium, a titanium alloy, aluminum, an aluminum alloy, or an alloy predominantly containing tin. Therefore, claim 7 is inconsistent with the claim from which it depends.
Regarding claim 17
The limitation “wherein the alloy is formed from a tin-nickel alloy” is unclear and therefore renders the claim indefinite. It is unclear if the alloy recited in the instant claim corresponds to the alloy from which the second layer is formed or to the nickel alloy of the metal substrate. Appropriate correction and clarification is required.
Regarding claim 18
The limitation “wherein the alloy is formed from a copper-tin alloy or a tin-silver alloy or a tin-zinc alloy or a tin-bismuth alloy or a tin-antimony alloy or a tin-cobalt alloy or a nickel-tungsten alloy or a tin-manganese alloy” is unclear and therefore renders the claim indefinite. It is unclear if the alloy recited in the instant claim corresponds to the alloy from which the second layer is formed or to the nickel alloy of the metal substrate. Appropriate correction and clarification is required.
Allowable Subject Matter
Claims 1, 8-16 and 20 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claims 1 and 16
The prior art of record, whether alone or in combination, fails to teach or fairly suggest the combination of the following limitations:
(a) wherein the non-metallic particles comprise a proportion of the electrically conductive particles which are formed from at least one material from the group comprising carbon, graphite, carbon nanotubes, carbon fibers, soot, graphene, graphene oxide, metal nitride, or metal carbide; and
(b) wherein the non-metallic particles further comprise a proportion of particles formed from at least one material from the group comprising metal sulfide, diamond, metal oxide, mica, or PTFE,
in the context of other limitations recited in the claims.
Yano teaches a component of an electrochemical cell (corresponding to a separator of a fuel cell) [para. 0059], the component comprising:
a metal substrate (the substrate comprises a metal sheet) [para. 0064]; and
a layer system (corresponding to a strike layer and a surface coating layer formed on the surface of the substrate) and which is at least partially electroplated onto the metal substrate (the strike layer and the surface coating layer may be formed by electroplating) [paras. 0068, 0079, 0084 and 0106], the layer system comprising a first layer (corresponding to the strike layer) disposed on the metal substrate [para. 0068], and at least one second layer (corresponding to the surface coating layer) disposed on the first layer [para. 0084],
the first layer (strike layer) being formed from copper or nickel (the strike layer is preferably a metal layer of Ni, Cu, Ag, Au, or the like or an alloy layer containing at least one selected from these elements) [paras. 0053 and 0100] and the at least one second layer (surface coating layer) being formed from an alloy comprising at least two of the elements tin, copper, nickel, silver, zinc, bismuth, antimony, cobalt, manganese, or tungsten, with non-metallic particles comprising electrically conductive particles embedded in the alloy (the surface coating layer may comprise an alloy layer, a carbon material layer, or a mixed layer thereof, wherein the alloy layer comprises, for example, alloys of Ni-Sn, Cu-Sn, Sn-Ag, Sn-Co, Ni-W, etc., and the carbon material layer includes carbon materials such as graphite, diamond, amorphous carbon, diamond-like carbon, carbon black, fullerene, and carbon nanotube) [paras. 0068, 0070 and 0073];
wherein the metal substrate is formed from a material from the group comprising stainless steel, titanium, a titanium alloy, aluminum, an aluminum alloy, or an alloy predominantly containing tin (titanium, titanium alloy sheet, stainless steel, and the lile) [para. 0064].
Yano further discloses carbon material layers comprising carbon materials such as graphite, diamond, amorphous carbon, diamond-like carbon, carbon black, fullerene, and carbon nanotube [paras. 0068, 0070 and 0073].
Kobayashi teaches a component (corresponding to a separator for a fuel cell) comprising a metal substrate (substrate 2 comprising pure copper or a copper alloy), a first layer (corresponding to diffusion layer 3a) and a second layer (corresponding to first plating layer 3) comprising an alloy (first plating layer 3 is made of a tin alloy) [Figs. 1(a)- 1(b), paras. 0024, 0026-0027 and 0032], wherein non-metallic particles (corresponding to conductive filler 5) comprising electrically conductive particles (suitable fillers include graphite, carbon fibers, metal carbides, and metal borides) are embedded in the alloy of the second layer (3) for improving conductivity [paras. 0034-0035].
While Kobayashi teaches electrically conductive particles embedded in an alloy plating layer, and Yano discloses various carbon materials, metal oxides and mixed coating layers comprising non-metallic materials dispersed in an alloy, the cited art does not teach or fairly suggest the claimed combination of both particle proportions recited in limitations (a) and (b) embedded in the alloy of the same second layer.
Claim 16 is allowed for the same reasons as claim 1 above.
Regarding claims 8-15 and 20
Claims 8-15 and 20 are allowed for their dependency on claims 1 and 16.
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 MAYLA GONZALEZ RAMOS whose telephone number is (571)272-5054. The examiner can normally be reached Monday - Thursday, 9:00-5:00 - EST.
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/MAYLA GONZALEZ RAMOS/Primary Examiner, Art Unit 1721
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