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 .
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 1-5 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 1, it is unclear what is required by “five or more fine protrusions of 10 to 100 nm”. It is unclear whether there is some area or length in which these protrusions must be found. The Specification appears to explain that these protrusions are to be found per micron of length in a thickness direction cross-section. See Specification (Table 2). However, it is unclear whether this is what is being claimed or not. It is recognized that virtually any surface would have such absolute number of protrusions somewhere on the surface.
Regarding Claim 1, it is unclear what is required by “real surface length/protrusion-free apparent surface length ratio”. The Specification appears to indicate that the thickness direction cross-section is supposed to be evaluated for the actual surface length of surface including the protrusions and for the “apparent” surface length that would be present were there to be no protrusions above a baseline surface. See Specification (paragraph 15). Firstly, it is unclear over what “apparent” surface area or length this evaluation is supposed to be made. For example, were the “apparent” length to be centered on a single protrusion, the ratio would be expected to be satisfied whenever two times the height/protrusion side length is 15% more than the base length, which could be virtually always for sufficiently high protrusions. Is the ratio to be evaluated over 1 micron length, for example? Secondly, this explanation however fails to explain what is to be considered for protrusions that are not in the range of 10 to 100 nm. In fact, the exemplified surfaces appear to have protrusions in excess of 100 nm, as is evidenced with average protrusion heights in excess of 100 nm. See Specification (Table 2). For those protrusions that are in excess of or below the specified range of 10 to 100 nm, is their contribution to “real surface” to be included or excluded? Alternatively, do they make a contribution to “protrusion-free apparent surface” length? What is the relationship between “protrusion-free” and the “five or more fine protrusions”? Does “protrusion free” only relate to what is not these or does it relate to what is other than all protrusions that may be present?
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 and 4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yano WO 2020/153117, as translated by USPA 2022/0085388. Yano teaches austenitic stainless steel sheet for fuel cell separator that has fine protrusions of average height of 45 nm with average interval of 114 nm (Table 3, A5; Figure 1). There are more than 5 fine protrusions. In view of the specified interval and as depicted, there would be expected to be ca. 10 protrusions in 1000 nm (1 micron) length. Yano does not specify claimed ratio. However, the claimed length of protrusion at a maximum would be obtained where the protrusions have least base width. So for 10 protrusions each at ca. 45 nm height the real length would be ca. 10x45x2, or 900 nm, plus the base length of ca. 1000 nm versus the apparent length of 1000 nm for a ratio of 1.9. Were the protrusions to extend from one to the other, with no intervening base, the real length would be ca. 10x45x
2
2
or 1300 nm versus apparent length of 1000 nm for a ratio of 1.3 approximating the angle for 45 nm height and 55 nm separation as 45 degrees. Thus, it would be expected that the claim ratio would be obtained. As well, the claimed ratio could be considered to be present with respect to a single protrusion. As seen in Figure 1, the protrusions in the upper portion of Figure 1 have triangular apex with angle approximating 90 degrees. The length would be
2
2
h vs. base length of 2h for ratio of
2
. Regarding Claim 4, Yano teaches claimed composition (Table 1, Steel A; Table 3, Steel A5).
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yano WO 2020/153117, as translated by USPA 2022/0085388. Yano teaches austenitic stainless steel sheet for fuel cell separator that has fine protrusions of average height of 45 nm with average interval of 114 nm (Table 3, A5; Figure 1). There are more than 5 fine protrusions. In view of the specified interval and as depicted, there would be expected to be ca. 10 protrusions in 1000 nm (1 micron) length. Yano does not specify claimed ratio. However, the claimed length of protrusion at a maximum would be obtained where the protrusions have least base width. So for 10 protrusions each at ca. 45 nm height the real length would be ca. 10x45x2, or 900 nm, plus the base length of ca. 1000 nm versus the apparent length of 1000 nm for a ratio of 1.9. Were the protrusions to extend from one to the other, with no intervening base, the real length would be ca. 10x45x
2
2
or 1300 nm versus apparent length of 1000 nm for a ratio of 1.3 approximating the angle for 45 nm height and 55 nm separation as 45 degrees. Thus, it would be expected that the claim ratio would be obtained. As well, the claimed ratio could be considered to be present with respect to a single protrusion. As seen in Figure 1, the protrusions in the upper portion of Figure 1 have triangular apex with angle approximating 90 degrees. The length would be
2
2
h vs. base length of 2h for ratio of
2
. Regarding Claim 4, Yano teaches claimed composition (Table 1, Steel A; Table 3, Steel A5). To the extent that Yano cannot be said to teach the claimed ratio, Yano teaches range of heights and intervals for protrusions. It would have been obvious to one of ordinary skill in the art before the time of filing to prepare surface with comparable intervals or lesser intervals to those demonstrated and with increased protrusion height. In doing so, the protrusion profile would include the same or more protrusions per unit length with greater contribution to the numerator of the ratio. Thus, even if the exemplified surface for Steel A5 were to have a ratio only close to the required claimed minimum for the ratio, these other rendered obvious surfaces would be expected to markedly exceed the ratio minimum. For example, protrusions of 100 nm and 55 nm interval would lead to ratio of 2.8 as opposed to the calculated estimate above where the provisional estimate for Steel A5 was 1.3. Regarding Claim 4, Yano teaches claimed composition (Table 1, Steel A; Table 3, Steel A5). Regarding Claim 5, Yano does not exemplify composition with claimed additions, but teaches that effective compositions may include those (paragraph 152). It would have been obvious to one ordinary skill in the art before the time of filing to prepare steel composition with claimed additions since Yano teaches that effective steel compositions may have these additional ingredients.
Claim(s) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yano WO 2020/153117, as translated by USPA 2022/0085388, in view of Yano USPA 2020/0340126. Yano is relied upon as set forth above in the section 102 rejection and the section 103 rejection over Yano. Yano teaches that ferritic steels are effective fuel separator materials and improved contact resistance is important (paragraphs 21, 44, and 47), but does not exemplify ferritic steel with claimed surface structure or teach using claimed composition. While Yano emphasizes structure is beneficial for austenitic steels, it is evident that Yano ‘126 provides for comparable structures for ferritic and austenitic steels (Table 1) in Yano ‘126 and in comparing Yano and Yano ‘126. Regarding Claims 2 and 3, Yano ‘126 teaches using ferritic steels (Table 1, Steel A). Yano ‘126 teaches desirability of textured surface, including average interval range overlapping significantly that of Yano (Table 2, Samples 4 and 9). Thus, it would have been obvious to one ordinary skill in the art before the time of filing to prepare steel composition with ferritic steel composition in Yano based on Yano ‘126 since Yano teaches that ferritic steels can be used and exemplifies austenitic steels, since Yano ‘126 teaches that both ferritic steels and austenitic steels can be used, since structural features in Yano ‘126 relating to protrusion interval are effective in both ferritic and austenitic steel, and since these intervals are comparable between Yano and Yano ‘126. That Yano explains that some features are not required because they are tailored for austenitic steel performance does not lead to non-obviousness of including those features in a ferritic steel separator since Yano ‘126 teaches that structural features can be comparable in both kinds of steel type.
Response to Amendment
In view of applicant’s arguments, applicant traverses the section 112, paragraph (b) rejection of the Office Action mailed on 1 October 2025. Applicant argues that Figures 1 and 2 and claim language should suffice to render claim definite. There is no alleged relationship that the cross-sections of Figures 1 and 2 are physically related, and there is no reason to believe they are. Moreover, it is unclear why the purported apparent length cross-section of Figure 2 is not a flat line. There is no definition provided. There is no known definition in the prior art. There is no reason for the claims to be limited to whatever definition applicant is arguing is impliedly present in the Specification and definite since it is never characterized as controlling the claim meaning, assuming it could be definite. More specifically, there is no definition of what constitutes the base of the protrusions, no definition of the length that will constitute the apparent length, and there is no definition of the length or lengths over which these protrusions are to be assessed. Applicant’s arguments do not address the specific issues raised in the rejection. It is pointed out that slight variation in ratio from 1.14 to 1.15 at boundary could distinguish claimed article from one that is not. Rejection is maintained.
In view of applicant’s arguments, applicant traverses the section 102 rejection over Yano of the Office Action mailed on 1 October 2025. Applicant argues that Yano fails to teach GDL contacting face having protrusions. Firstly, the claim is not interpreted to require this feature as opposed to require that it be capable thereof. In other words, the claim is interpreted broadly to be a metal material for a separator, not one necessarily in contact with GDL. Secondly, as a separator material in Yano, it would be expected that it would be implemented as per Specification (paragraph 2) and as explained in Yano as having its textured surface being in contact with GDL (paragraph 40). Applicant further argues that applicant’s alleged implied definition of TEM analyzed protrusions and properties thereof are lacking in Yano. This alleged definition and what it is and whether it is controlling is subject to indefiniteness rejection above, and so this argument cannot be persuasive for this reason. Moreover, applicant has not traversed the protrusion analysis of the rejection which is consistent with the claimed features and encompassed under BRI. More generally, patentable weight is not conferred by claimed testing method of an article unless it necessarily characterizes compositionally and/or structurally distinguishable article vis a vis the prior art, for which there is no evidence that this pertains in this situation. Rejection is maintained.
In view of applicant’s arguments, applicant traverses the section 103 rejection over Yano and the section 103 rejection over Yano in view of Yano ‘126 of the Office Action mailed on 1 October 2025. Applicant reemphasizes that neither Yano nor Yano ‘126 teaches or suggests claimed TEM analysis method. However, this is not persuasive for reasons addressed above. Rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera N. Sheikh, can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784
27 May 2026
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