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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has complied with all of the conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e).
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/26/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings received on 02/26/2024 were reviewed and are acceptable.
Specification
The specification filed on 02/26/2024 was reviewed and is acceptable.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent Application 18/587,464 in view of Goebel et al. (US 20070275288 A1). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent Application 18/587,464 also claims a fuel cell stack comprising all elements of claim 1 of the instant application:
A cell stacked body formed by stacking a plurality of power generation cells each having an electrolyte membrane in a predetermined direction.
An exhaust gas flow path penetrating the cell stacked body in the predetermined direction so as to discharge a reaction gas supplied to the plurality of power generation cells.
A second opening communicating with the exhaust gas flow paths between an end on a small diameter side of the reduced diameter portion and the outlet of the exhaust gas flow path, which is not patentably distinct from a flow path forming portion forming a drainage flow path so that water flows from an upstream side to a downstream side of the exhaust gas flow path, as the second opening is necessarily an exhaust gas flow path forming portion, forming a drainage flow path. It is known at the time of the invention that water is present in exhaust gases of fuel cell stacks, as is disclosed in Goebel [0006], and that water would flow from an upstream side to a downstream side of the exhaust gas flow path.
A communicating tube disposed in the exhaust gas flow path so as to communicate with an upstream side and a downstream side of the exhaust gas flow path respectively through a first opening and a second opening of the communicating tube, which is not patentably distinct from a flow path forming portion including a communicating tube disposed in the exhaust gas flow path so as to communicate with the upstream side and the downstream side of the exhaust gas flow path respectively through a first opening and a second opening of the communicating tube, as the communicating tube is disposed in the exhaust gas flow path so as to communicate with the upstream side and downstream side through a first and second opening in both claims.
The exhaust gas flow path includes a reduced diameter portion configured to gradually decrease a flow path area toward an outlet of the exhaust gas flow path, which is not patentably distinct from a flow path forming portion further including a diaphragm portion at an inlet of the drainage flow path, as a diaphragm portion necessarily forms an inlet of the drainage flow path and a reduced diameter portion configured to gradually decrease a flow path area toward an outlet of the exhaust gas flow path.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent Application 18/587,464. Although the claims at issue are not identical, they are not patentably distinct from each other because the reduced diameter portion configured to gradually decrease a flow path area toward an outlet of the exhaust gas flow path in claim, which is not patentably distinct from the diaphragm portion, is already provided in the communicating tube disclosed in claim 1.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being unpatentable over Goebel et al. (US 20070275288 A1).
Regarding claim 1, Goebel discloses a fuel cell stack [0011], a cell stacked body formed by stacking a plurality of power generation cells each having an electrolyte membrane in a predetermined direction [0092], an exhaust gas flow path penetrating the cell stacked body in the predetermined direction so as to discharge a reaction gas supplied to the plurality of power generation cells [0059], and a flow path forming portion forming a drainage flow path so that water flows from an upstream side to a downstream side of the exhaust gas flow path [Fig 17, represented between plates 240 and 242], wherein the flow path forming portion includes a communicating tube disposed in the exhaust gas flow path so as to communicate with the upstream side and the downstream side of the exhaust gas flow path respectively through a first opening and a second opening of the communicating tube [Fig 17, 244 and 246], and the flow path forming portion further includes a diaphragm portion at an inlet of the drainage flow path [Fig 17, diaphragm circled below].
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Regarding claim 2, Goebel discloses all of the limitations as set forth above. Goebel also discloses a diaphragm portion provided in the communicating tube [Fig 17, diaphragm circled below].
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Regarding claim 3, Goebel discloses all of the limitations as set forth above. Goebel also discloses a communicating tube including a first end portion at which the first opening is provided and a second end portion at which the second opening is provided [Fig 17]. Goebel discloses a tube support portion supporting the first end portion [0072, 0076, Fig 10]. For clarity, Figures 10 and 17 are produced below. The cathode side bipolar plate 114 in figure 10 [described in 0076] is also represented as the cathode side bipolar plate 242 in figure 17 [described in 0083]. Goebel describes the use of shims to create tunnels and support seal loads [0072]. The shims [elements 122 and 126] and raised portion (element 128), by maintaining seal integrity of the cathode side of the fuel cell [0076], are functioning as a tube support portion.
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Regarding claim 7, Goebel discloses all of the limitations as set forth above. Goebel also discloses a tube support portion provided in a manner bulged upward from a bottom surface of the exhaust gas flow path. Figure 10 is produced below for clarity. Goebel discloses a raised portion 128 and shim 126, and that the combination of the shim and the raised portion maintain the seal integrity of the cathode side of the fuel cell. As a raised portion is necessarily bulged upward, the tube support portion is provided in a manner bulged upward from a bottom surface of the exhaust gas flow path.
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Claim Rejections - 35 USC § 103
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.
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 4-6, are rejected under 35 U.S.C. 103 as being unpatentable over Goebel et al. (US 20070275288 A1) as applied to claim 1 above and further in view of Ishida (US 20150104729 A1).
Regarding claim 4, Goebel discloses all of the limitations as set forth above. Goebel does not disclose a division portion provided at an inlet of the drainage flow path so as to cross the drainage flow path to divide water. Ishida teaches a buffer provided in the vicinity of reactive gas inlet and outlet manifolds, to cause smooth flow of the reactive gas over entire electrode reaction surfaces [Ishida 0008]. Goebel and Ishida pertain to the same field of invention, fuel cells. It would have been obvious to a person having ordinary skill in the art to apply the buffers disclosed in Ishida to the fuel cell disclosed in Goebel, in order to cause smooth flow of the reactive gas over entire electrode reaction surfaces [Ishida 0008]. For clarity, Ishida Figure 4 is produced below. The oxidant gas inlet buffer [Ishida Figure 4 element 28] divides the flow path between a first oxidant gas inlet buffer region 28a and a more deeply grooved second oxidant gas inlet buffer region 28b [0037]. Goebel discloses that cathode exhaust gases include water as a stack by-product [Goebel 0006]. By applying the oxidant gas inlet buffer taught by Ishida to the drainage flow path disclosed by Goebel, the buffer would necessarily act as a division portion provided at an inlet of the drainage flow path so as to cross the drainage flow path to divide water.
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Regarding claim 5, modified Goebel discloses all of the limitations as set forth above. Modified Goebel further discloses a division portion provided at a diaphragm portion. For clarity, Ishida Figure 4 and Goebel Figure 17 have been produced below. The first oxidant gas inlet buffer 28 includes a first oxidant gas inlet buffer region 28a [Ishida 0037]. It can be seen in Ishida Figure 4 that the first oxidant gas inlet buffer region 28a is provided in a diaphragm portion in Ishida, as shown below [Ishida Figure 4]. When applying the oxidant gas inlet buffer to the fuel cell in Goebel, it would have been obvious to a person having ordinary skill in the art at the time of the instant invention to provide the oxidant gas inlet buffer at the diaphragm portion.
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Regarding claim 6, modified Goebel discloses all of the limitations as set forth above. Modified Goebel further discloses a division portion provided to divide the first opening into a plurality of regions. For clarity, Ishida Figure 4 has been produced below. The first oxidant gas inlet buffer 28 includes a first oxidant gas inlet buffer region 28a and a second oxidant gas inlet buffer region 28b. The buffer taught by Ishida, when applied to Goebbel, acts as a division portion to divide the first opening into a plurality of regions.
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Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Goebel et al. (US 20070275288 A1) as applied to claim 3 above and further in view of Nonoyama et al. (US 20180241069 A1).
Regarding claim 8, Goebel discloses all of the limitations as set forth above. Goebel does not disclose an insulator disposed outside the cell stacked body in the predetermined direction, wherein the tube support portion is provided at the insulator. Nonoyama discloses an insulator disposed outside the cell stacked body in the predetermined direction, wherein the tube support portion is provided at the insulator, for electrically insulating the end plates of the fuel cell [Nonoyama 0032]. Goebel and Nonoyama pertain to the same field of invention, fuel cells. It would have been obvious to a person having ordinary skill in the art at the time of the invention to apply the insulating plates from Nonoyama to the fuel cell stack in Goebel, because the outermost plates of the fuel cell stack would be exposed without providing a frame or other structure around the fuel cell disclosed in Goebel. The tube supporting portion disclosed in Goebel comprises a raised portion of the cathode side bipolar plate [Goebel 0076]. With the insulating plates disclosed in Nonoyama applied to the fuel cell disclosed in Goebel, the insulating plates would be adjacent to the cathode side bipolar plate, and the insulator would be disposed outside the cell body in the predetermined direction, with the tube support portion provided at the insulator.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WOLFE STONE FENNELL whose telephone number is (571)270-5926. The examiner can normally be reached M-TH 7:30am - 5:30pm EST.
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, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.W.F./Examiner, Art Unit 1781
/ALICIA J WEYDEMEYER/ Primary Examiner, Art Unit 1781
