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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-2 and 8-11) in the reply filed on 7/29/26 is acknowledged.
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(s) 1-2 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suenaga (US 2002/0177032, cited in IDS filed 4/19/24).
Regarding claim 1, Suenaga et al teaches an electrode material for fuel cells (abstract), the electrode material comprising carbon fibers (fig 2, paragraph [0043-0044], skeleton formed by a conductive fiber 21 such as a carbon fiber of a relatively large particle diameter), wherein the carbon fibers are carbon fibers covered with fibrous nanocarbon (fig 2, paragraph [0045],[0055], carrier fibers 22 of a relatively small particle diameter in the range of nanometers, in a portion of the space of a skeleton formed by the fibers 21) that supports a catalyst material (paragraph [0047], amount of catalyst in the catalytic layer can be secured by the carrier fibers).
Regarding claim 2, Suenaga et al teaches wherein the carbon fibers covered with fibrous nanocarbon that supports a catalyst metal are further covered with a proton conductive material (paragraph [0048], proton conductive member is formed on the surface of the skeleton fibers 21 and the carrier fibers 22).
Regarding claim 8, Suenaga et al teaches wherein the fibrous nanocarbon has a fibrous structure formed by stacking graphene, and graphene edges are exposed on the entire surface of the fibrous structure (paragraph [0125], carbon nano-fiber having a graphite structure, so-called platelet structure where a graphite c surface, of which c axis is parallel to a fiber lengthwise direction, is laid one upon another in the fiber lengthwise direction).
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al (US 2006/0115712, cited in IDS filed 4/19/24).
Regarding claim 1, Kim et al teaches an electrode material for fuel cells (abstract), the electrode material comprising carbon fibers (paragraph [0038], fig 1A-1B, microporous layer 102, paragraph [0042], includes a conductive material such as carbon nanofiber), wherein the carbon fibers are carbon fibers covered with fibrous nanocarbon (fig 1A-1B, paragraph [0038], nano-carbon 103 formed on the surface of the microporous layer 102, paragraph [0046], nano-carbon 103 may be a carbon nanofiber) that supports a catalyst material (fig 1B, paragraph [0038], catalyst particles 105 coated on the surface of the nano-carbon 103).
Regarding claim 2, Kim et al teaches wherein the carbon fibers covered with fibrous nanocarbon that supports a catalyst metal are further covered with a proton conductive material (paragraph [0069-0070], proton-conducting polymer of polymer electrolyte member 110, fig 3 showing the membrane 110 adjacent the catalyst layer 107, note catalyst layer 107 in fig 1B is shown as the catalyst 105 coated nanofibers 103).
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.
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Suenaga et al (US 2002/0177032, cited in IDS filed 4/19/24).
Regarding claims 9-10, Suenaga et al teaches an embodiment (fig 3) where a rough catalytic layer (32) comprises conductive skeleton fibers (paragraph [0100], described in the first embodiment, paragraph [0043-0044], carbon fiber) is laminated with a dense catalytic layer (33) (paragraph [0097]), which can include the carrier fibers described in the first embodiment (paragraph [0102], paragraph [0055], carrier fibers 22 of a relatively small particle diameter in the range of nanometers, in a portion of the space of a skeleton formed by the fibers 21).
In this embodiment, Suenaga et al teaches that the film thickness of the dense catalytic layer (which may include the carrier fibers of a relatively small particle diameter in the range of nanometers) is preferably not less than 1 µm (paragraph [0107]), with a practical film thickness to be not more than 100 µm (paragraph [0106]), thus overlapping the claimed range of a layer of the fibrous nanocarbon formed on the surface of the carbon fibers has a thickness of 0.1 µm or more (claim 9) and a thickness of 10µm or less (claim 10).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Regarding claim 11, Suenaga et al is quiet to wherein the electrode material comprises a base material comprising the carbon fibers, and an amount of the fibrous nanocarbon present per 1 g of the base material comprising the carbon fibers is 2 to 10,000 mg/g.
However, Suenaga et al recognizes (paragraph [0106]) a ratio of the thicknesses of the dense catalytic layer (carrier fibers of a relatively small particle diameter) to a thickness of the rough catalytic layer (conductive skeleton fibers) to be no more than 1/5, as too large of a film thickness would lower the service efficiency of the catalyst and lower the cell power generation amount per electrode (paragraph [0106]).
It would have been obvious to one of ordinary skill in the art, through routine experimentation, to optimize the ratio of the amount of the fibrous nanocarbons to the base material comprising the carbon fibers, as Suenaga et al recognizes optimizing for service efficiency of the catalyst and cell power generation amount per electrode.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (US 2006/0115712 A, cited in IDS filed 4/19/24).
Regarding claims 9-10, Kim et al teaches the catalyst layer (fig 1B, catalyst layer 107 is the nanofibers 103 coated with catalyst 105) having a thickness of 0.05 µm to 10 µm (paragraph [0049]), overlapping the claimed range of a layer of the fibrous nanocarbon formed on the surface of the carbon fibers has a thickness of 0.1 µm or more (claim 9) and 10 µm or less (claim).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sugino (JP 2006-216385A, cited in IDS filed 4/19/24) teaches an electrode catalyst layer for a fuel cell (abstract) comprising a conductive fiber (111) having conductive nano-fibers (112) supporting catalyst particles (113) (abstract, fig 1A-1B). The conductive fibers are preferably carbon fibers (paragraph [0022-0023]). The conductive nanofibers are preferably carbon nanofibers, carbon nanotubes, or carbon nanohorns (paragraph [0029-0032]). Kawakami et al (US 2005/0079119, cited in IDS filed 10/08/25) teaches a method of growing carbon nanofibers, describing a platelet type graphite nanofiber has a plurality of graphene sheets stacked vertically to a fiber axis (paragraph [0041]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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