DETAILED CORRESPONDENCE
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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2021-156637, filed on September 21st, 2021.
Information Disclosure Statement
The Information Disclosure Statements (IDS) submitted on March 11th, 2024; February 4th, 2025; and November 11th, 2025 have been received and considered by the Examiner.
Claim Interpretation
All “wherein” clauses are given patentable weight unless otherwise noted. Please see MPEP 2111.04 regarding optional claim language.
Prior Art
Tanno US PG Publication 2019/0245218 (“Tanno”) *as cited in the IDS filed on March 11th, 2024
Toru WO2012144390A1 (“Toru”)
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tanno US PG Publication 2019/0245218 in view of Toru WO2012144390A1 (machine translation provided).
Regarding Claim 1, Tanno discloses a fuel cell separator ([0013], entire disclosure dependent upon) comprising a graphite powder and an epoxy resin component including a base resin, a curing agent, and a curing accelerator ([0013]),
wherein the graphite powder has an average particle size d50 of from 30 to 100 µm, specifically 50 µm (which falls within and therefore anticipates the claimed range of 20 to 80 µm) ([0013], [0074]).
Tanno fails to explicitly disclose wherein the average height is from 30 to 70% of the average particle size d50.
However, Toru discloses a separator for a fuel cell (Abstract, entire disclosure dependent upon) comprising graphite particles with a diameter between 30 and 100 µm and a resin component ([0011], [0063]). Toru teaches an aspect ratio of the graphite particles is preferably 10 or less in order to suppress deformation such as warpage ([0061]).
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the instant application to modify the separator of Tanno such that the graphite particles have an aspect ratio of 10 or less in order to suppress deformation such as warpage, as taught by Toru.
The skilled artisan would recognize that the aspect ratio means the ratio of the average diameter to the average height (i.e. diameter/height). And, therefore, Tanno in view of Toru discloses an average height that is at least 10% of the average particle size d50 (i.e. height/diameter) (which encompasses the instantly claimed range of 30 to 70%)1.
1 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).
Claim 1 is considered product-by-process claim. The cited prior art teaches all of the positively recited structure of the claimed apparatus or product. The determination of patentability is based upon the apparatus structure itself. The patentability of a product or apparatus does not depend on its method of production or formation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (see MPEP § 2113).
Regarding Claims 2-3, Tanno in view of Toru teaches the instantly claimed separator according to Claim 1. Since the separator of Tanno in view of Toru covers the entirety of the claimed fuel cell separator, the separator of Tanno in view of Toru would have the same properties as the instantly claimed separator – including the flexural strength and the flexural fatigue2,3.
2 Regarding product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
3 Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Regarding Claim 4, Tanno in view of Toru teaches the instantly claimed separator according to Claim 1, and Tanno discloses wherein the base resin is at least one resin selected from the group consisting of cresol-novolak epoxy resins and biphenyl-type epoxy resins ([0013]).
Regarding Claim 5, Tanno in view of Toru teaches the instantly claimed separator according to Claim 1, and Tanno discloses wherein the curing agent is a novolac-type phenolic resin ([0013]).
Regarding Claim 6, Tanno in view of Toru teaches the instantly claimed separator according to Claim 1, and Tanno discloses wherein the curing accelerator includes an imidazole compound having a phenyl group at the 2 position ([0013]).
Regarding Claim 7, Tanno in view of Toru teaches the instantly claimed separator according to Claim 1, and Tanno discloses wherein the separator contains from 20 to 40 parts (which encompasses the instantly claimed range of 25 to 40 parts)1 by weight of the epoxy resin component per 100 parts by weight of the graphite powder ([0045]).
1 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVIA MASON MELFI whose telephone number is (703)756-4652. The examiner can normally be reached Monday-Thursday, 7am-6pm EST.
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/O.M.M./Examiner, Art Unit 1729
/ULA C RUDDOCK/Supervisory Patent Examiner, Art Unit 1729
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