DETAILED ACTION
Application 18/646833, “Method For Manufacturing Metal Plate, Metal Plate, Electrochemical Element, Electrochemical Module, Electrochemical Device, Energy System, Solid Oxide Fuel Cell, And Solid Oxide Electrolytic Cell”, is a DIVISION of 17/043798, which is the national stage entry of a PCT application filed on 3/29/19 and claims priority from a foreign application filed on 3/30/18.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office Action on the merits is in response to communication filed on 2/16/26.
Response to Arguments
Applicant’s arguments filed on 2/16/26 have been fully considered, but are not persuasive. Applicant presents the following arguments.
The “porosity” disclosure in Yamanis and the “aperture ratio” of the present application have different technical meanings. Applicant cites a link to a science direct article to “porosity” in support of the argument, the article apparently indicating that porosity considers a ratio of void space in a volume of porous medium. In response, this meaning of porosity alleged by applicant is not inconsistent with the meaning applied by the Office of porosity in correlating this parameter to the claimed aperture ratio. More specifically, as disclosed, the metal sheet of Yamanis (and the analogous metal sheets other cited references) is formed by a metal grid like pattern with openings between solid portions. The solid portions are metal portions, such as formed by wire in Yamanis, that are subsequently rolled to provide the sheet. The metal wires would be understood by a skilled artisan to be substantially dense wires, particularly after a densifying rolling action. Thus, the “void space” of the Yamanis sheet substantially consists of the openings such as in Yamanis Fig. 4A and 4B. As illustrated in these Figures, the void space is provided by apertures having circular openings (Fig. 4A) having cylindrical projections in the thickness direction (Fig. 4B). Accordingly, even if porosity is understood to be defined as alleged by applicant, the void space corresponds directly to the apertures of the sheet, thus the porosity of Yamanis is properly compared to the claimed aperture ratio. It is further noted that since the apertures are substantially cylindrical (Fig. 4B), the two-dimensional area ratio illustrated in Fig. 4A is consistent with the three-dimensional porosity value determinable by considering Figure 4B. In other words, the porosity could be calculated as the product of the aperture ratio (ratio of aperture area to total area in Fig. 4A) multiplied by the thickness t2, divided by the peripheral volume of the sheet calculated as the product of the total area in Fig. 4A multiplied by the thickness t2. As both the numerator and the denominator are multiplied by thickness t2, this quantity can be factored out of the calculation.
It is noted that this argument may be considered moot because the current rejection, necessitated by amendment, does not rely on Yamanis’ teaching that the porosity may be between 20% and 30%.
Yamanis does not disclose that the 20% to 30% porosity of paragraph [0005] could be achieved by rolling. In response, Yamanis discloses the inventive process of forming a mesh and then flattening the mesh to be an alternative/improved manufacturing technique for producing the product of the prior art described at paragraph [0005]. Therefore, the skilled artisan would presume that the Yamanis technique could produce the same product, otherwise the method is not actually comparable to the prior art technique of drilling and punching which is to be improved by the invention. If the Yamanis technique could not produce the product which it is intended to produce in an improved manner, then the Yamanis disclosure is inoperable. As described in MPEP 716.01(c), appropriate evidence is required to support an argument of inoperability of the prior art.
Yamanis does not disclose rolling metal material to provide a plate like structure having surface opening aperture ratio of 7% or less. In response, this deficiency is acknowledged by the Office and is addressed by citation of Sawada, which provides motivation for providing a low surface opening aperture ratio.
An aperture ratio of 7% or less makes it possible to increase the strength of a metal plate while ensuring desirable permeability of the sheet. Published paragraph [0009] is cited in support of the argument. In response, Sawada teaches that holes having an opening diameter which are too small may block desired material penetration for a given application (paragraph [0047]), but that the presence of the holes and strength are inversely related (paragraph [0010]). Applicant’s finding that the aperture ratio is a result-effective variable optimizable to balance strength vs permeability, is an expected result based on the teaching of the prior art.
The rolling ratios of Behlen and Yamanis are different from one another. In response, Behlen is relied on for general teachings that when thickness of a wire type mesh sheet is reduced, the hole opening size begins to decrease at a certain degree of compression (e.g. 50%), and that by regulating the thickness of the sheet, the opening size can be reduced in a controlled manner. These teachings are based on mechanical principles and therefore would convey to the subject matter of Yamanis, which is governed by the same mechanical principles.
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.
Claims 1 and 9-11 are rejected under 35 U.S.C. 103 as being obvious over the combination of Yamanis (US 2011/0212379), Tucker (US 2010/00143824), Behlen (USP 2423547) and Sawada (US 2020/0082998).
Regarding claim 1, Yamanis teaches method for manufacturing a metal plate (“fuel cell sheet”, paragraph [0006]; “the porous sheet 44 is also metal”, paragraph [0024]), comprising:
providing a metal material having a thickness T1 and a plurality of penetration spaces passing through the metal material in a thickness direction, wherein each of the plurality of penetration spaces form a surface opening in a surface of the metal material, and wherein the metal material is a woven metal mesh or an expanded material (see Figs. 2A and 2B, where a woven metal mesh with the claimed penetration spaces, surface openings, and a thickness t1 corresponding to claimed T1; see also “expanded metal sheet” at paragraph [0027]);
rolling the metal material using roll-based rolling until a plate-like metal plate having a desired geometry is produced (see Fig. 3),
wherein rolling the metal material reduces an area of each of the surface openings (Fig. 3; paragraph [0025]), and
wherein the thickness T1 is larger than the thickness T2 (see Fig. 3; paragraph [0025]).
Claim 1 further requires that the method for manufacturing a metal plate is a method for manufacturing a metal plate “in an electrochemical element in which at least an electrode layer, an electrolyte layer, and a counter electrode layer are provided on the metal plate”.
However, the claim is drawn to a method of making a metal plate, not a method of making an electrochemical element. The body of the claim does not require a step of integrating the metal plate into an electrochemical element, but instead only includes steps drawn to the manufacture of the metal plate. Therefore, the italicized limitation is found to be a non-limiting statement of intended use contained in the preamble, and is not found to limit the claimed method.
It is noted that Yamanis does teach (Fig. 1B) the metal plate used in an electrochemical element (item 10) in which at least an electrode layer (item 24), an electrolyte layer (item 20), and a counter electrode layer (item 22) are provided on the metal plate (item 62).
Claim 1 further requires: i) that the desired geometry includes an aperture ratio of the surface openings of less than 7%, ii) that the desired geometry includes a thickness T2 of 0.15 mm to 1.0 mm, and iii) wherein the metal material is rolled until the plate-like metal plate comprises a rolling ratio of 16.7-48.2%, wherein the rolling ratio is defined by (T1 - T2)/T1 x 100, features which are not expressly taught by Yamanis.
However, it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” (MPEP 2144.04 IVA).
Here, these differences are primarily drawn to matters of degree or scale, with the differences effecting function of the forming sheet in a well-undersood manner. More specifically, Yamanis teaches a metal mesh which is rolled to flatten the mesh into a sheet and simultaneously reduce the aperture size of the sheet based on the desired characteristics of a sheet formed using the method. The amount of flattening and aperture size reduction by rolling is simply selected at the discretion of the artisan and can be controlled within the scope of the Yamanis invention. Therefore, there is a presumption of obviousness notwithstanding Yamanis’ deficiency with respect to these teachings of scale.
Moreover, additional references and teachings are cited to more concretely address the deficiencies of Yamanis.
As to i), although Yamanis does not teach an aperature ratio reduced to 7% or less, Yamanis does teach that “person skilled in the art and having the benefit of this disclosure would be able to adjust parameters (such as the size of the openings 76 in the screen, weave patterns, thickness t1, etc.) to produce a desired diameter d2” (paragraph [0026]).
Furthermore, in the metal working art, Sawada teaches a metal foil, wherein the metal foil is configured to have an aperture ratio of 0.5 to 10% for the benefit of balancing strength and ability to pre-dope lithium (paragraph [0012]), which requires the presence of holes in the sheet. Sawada further teaches that the presence of the holes and strength are inversely related (paragraph [0010]). Although Sawada’s embodiments are primarily drawn to battery applications, Sawada further teaches the metal foil useful for many different applications [including fuel cell applications and/or catalyst carrier applications] (paragraph [0235]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the method of Yamanis to produce aperture ratios of 7% or less, by increasing the amount of rolling, for the benefit of producing sheets which favor strength over openness as taught by Sawada.
As to ii), in the fuel cell art, Tucker teaches a metal support sheet which is 50 to 1000 µm thick, with the thickness required so that the metal support sheet can provide structural foundation of the electrochemical cell (paragraph [0049]).
It would have been obvious to a person having ordinary skill in the art at the time of invention to configure the metal plate of Yamanis to have a thickness T2 of 0.15 to 1.0 mm for the benefit of ensuring that the metal plate is robust enough to support an electrochemical cell as taught by Tucker.
As to iii), although Yamanis does not expressly teach a rolling ratio of 16.7-48.2%, wherein the rolling ratio is defined by (T1 - T2)/T1 x 100, Yamanis does teach that “person skilled in the art and having the benefit of this disclosure would be able to adjust parameters (such as the size of the openings 76 in the screen, weave patterns, thickness t1, etc.) to produce a desired diameter d2” (paragraph [0026]).
Furthermore, in the metal processing art, Behlen teaches that for a mesh comprised of woven wires, reduction in opening size onsets when the thickness of the mesh is reduced to about 50% thickness and opening size decreases linearly with thickness reduction beyond the onset thickness (see Behlen Fig. 7 where sheet thickness is used as an independent variable for manipulation; the original sheet thickness is 0.009 inches, and opening size begins to reduce beyond about 0.005 inches, and decreases linearly with further thickness reduction) and that at 50% thickness reduction a smooth surface is produced (c4:18-24). Behlen further teaches that by regulating the thickness of the sheet, the opening size can be controlled (c3:38-41).
Thus, the thickness change is a result-effective variable which is to be manipulated to control factors such as smoothness of the rolled sheet and final-product opening size, and the prior art suggests reduction of at least 50% produces a smooth surfaced sheet, and that the opening size can be systematically reduced by further reducing thickness below 50%. Therefore, the claimed rolling ratio of 16.7 to 48.2% is found to be obvious over the cited art because the manipulated parameter is a known result-effective variable (strength proportional to thickness, aperture ratio decreasing as thickness is reduced by rolling), the cited art suggests reducing the thickness to at least 50% of the original value and further reducing thickness to proportionally further decrease the opening size as in Behlen Fig. 7, and no unexpected results appear to be associated with the claimed range.
Claim 1 as amended on 2/16/26 further recites wherein that the aperture ratio is calculated by dividing a sum of areas of the surface openings by an area of the hole region, wherein the hole region is a region on a front face of the metal material provided with the penetration spaces.
This additional limitation is not found to change the application of the prior art at least because the claimed “hole region” may be understood to mean the whole of the surface area of the metal plate (i.e. the entirety of item 44 as illustrated in Yamanis Fig. 4A may be the “hole region”) because the claim as worded does not require that the hole region is not coextensive with the total area of the metal plate. Therefore, the requirement that only the “hole region” is considered in determining the aperture ratio does not distinguish the claimed method from that suggested by the cited art.
Regarding claim 9, the cited art remains as applied to claim 1. Yamanis further teaches the rolled sheet having an exemplary aperture opening diameter 10 micrometers (paragraph [0005, 0025]), which corresponds to an opening area of 7.85 X 10-5 mm.
Regarding claims 10 and 11, the majority of the limitations are taught by the cited art as previously described in the rejection of independent claim 1. Claims 10 and 11 differ from claim 1 in that rather than a woven or metal mesh or expanded metal, the metal material is a punched metal sheet comprising circular holes with a diameter, wherein the circular holes are formed at positions corresponding to the lattice points of an orthogonal lattice. Yamanis does not teach a preferred embodiment wherein the metal material is a punched metal sheet, as claimed.
However, Yamanis does teach that it is conventionally known to fabricate a metal plate using drilling and punching operations, though problems are associated with drilling and punching such as forming multiple closely positioned holes and higher cost (paragraph [0005]), and that the structure of the metal plate may be a planar structure comprising circular holes formed at positions corresponding to the lattice points of an orthogonal lattice (Fig. 4A).
As described in MPEP 2123, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments… Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments… A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”
Here, it would have been obvious to a person having ordinary skill in the art at the time of invention to implement the method of Yamanis using, as the preform to be rolled, a punched metal sheet comprising circular holes formed at positions corresponding to the lattice points of an orthogonal lattice, since this technique merely requires the simple substitution of simple substitution of one known element (the mesh metal material of the preferred embodiment) for another (a punched sheet suggested by the Background embodiment) to yield predictable results (the punched sheet, instead of a wire mesh, could be rolled to reduce the thickness and aperture diameter thereof, with the expected result that the product would still be functional as a metal support plate, but that cost may be increased).
Therefore, absent any evidence that any unpredictable or unexpected result is associated with using a punched metal sheet, rather than a woven mesh, as the metal material to be rolled, the invention of claims 10 and 11 is found to be obvious over the combination of Yamanis and Tucker.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being obvious over the combination of Yamanis (US 2011/0212379), Tucker (US 2010/00143824), Behlen (USP 2423547), Sawada (US 2020/0082998) and Murphy (USP 1919984).
Regarding claims 10 and 11, the majority of the limitations are taught by the cited art as previously described in the rejection of independent claim 1. Yamanis does not expressly teach wherein the method comprises providing a punched metal sheet having circular holes formed therein at positions corresponding to the lattice points of an orthogonal lattice, and then rolling the punched metal sheet, as claimed.
However, Yamanis does teach that it is conventionally known to fabricate a metal plate using drilling and punching operations, though problems are associated with drilling and punching such as forming multiple closely positioned holes and higher cost (paragraph [0005]), and that the structure of the metal plate may be a planar structure comprising circular holes formed at positions corresponding to the lattice points of an orthogonal lattice (Fig. 4A).
Moreover, in art of a different field of endeavor, but which is reasonably pertinent because it addresses the common problem of methods of making metal plates, Murphy teaches a method of making a metal sheet with small holes by first providing a perforated metal sheet which is thicker than the desired sheet and with holes larger than desired, then rolling the sheet in order to reduce the thickness and hole size of the sheet. Murphy further teaches that this technique can be used to provide holes smaller than a conventional punching process (p1:61-89).
It would have been obvious to a person having ordinary skill in the art at the time of invention to modify the method of Yamanis by using as the metal material a punched metal sheet comprising orthogonally oriented holes, and subsequently rolling the sheet for the benefit of employing a simple technique which is effectively for producing a metal sheet comprising extremely small openings as taught by Murphy. Moreover, such a modification would simply require the simple substitution of one known element (a metal woven preform) with another (a punched metal preform) to yield predictable results (ultimately, a functional support sheet would be produced either way); therefore, a prima facie case of obviousness for simple substitution exists.
Relevant or Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, though not necessarily pertinent to applicant’s invention as claimed.
Hillesheim (USP 4068366) teaches that in the metal processing art, punching is more expensive than forming a perforated material from a mesh, but that it is nevertheless sometimes used, particularly when the metal mesh technique “cannot be applied for other reasons” (c1:9-19);
Rakowski (US 2006/0286433): preparation of a fuel cell component using a combination of stamping, machining and rolling to provide a desired thickness or finish;
Brown (US 2018/0097250): fabricating fuel cell plate including “various metal forming techniques”, such as punching and rolling, most appropriate technique can be determined “without undue effort” via testing and modeling;
Moon (KR 10-1528075): metal plate having structure of claimed metal plate, applied in parent application 17/043798.
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 JEREMIAH R SMITH whose telephone number is (571)270-7005. The examiner can normally be reached Mon-Fri: 9 AM-5 PM (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, Tiffany Legette-Thompson can be reached on (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JEREMIAH R SMITH/Primary Examiner, Art Unit 1723
Prosecution Insights