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 .
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 3/27/2026 is acknowledged.
Claims 1, 3, 5, 7-8, 10, 17, 21, and 31-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/27/2026.
Claim Rejections - 35 USC § 112
Claims 37-38 and 43-44 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.
The term “high” in claims 37 and 44 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This applies to both limitations of high edge density and high density of hydroxy groups.
The term “brittle” in claims 38 and 43 is a relative term which renders the claim indefinite. The term “brittle” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention
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) 34 and 42-43 are rejected under 35 U.S.C. 102a1 as being anticipated by Blunk et al, US Patent Publication 2011/0014548
Regarding claim 34, Blunk teaches a fuel cell bipolar plate that contains hydrophilic carbon fiber paper (carbon paper is part of the bipolar plate [0031] and claim 6) that (a) remains hydrophilic when stored under water for 30 days (explicitly teaches a durable hydrophilic effect for 45 days of soaking [0031]) and, (b) is composed of carbon fibers that are undamaged (there is no teaching of damaged fibers and in fact Blunk explicitly teaches that the device has a durable effect which is a teaching of not breaking down or damaging [0031]).
Regarding claim 42, Blunk teaches a water purification system, capacitor, flow battery, aqueous electrolyzer, or sensor (fuel cell, see abstract and claims) comprising hydrophilic carbon fiber paper ([0031] and claim 8) that (a) remains hydrophilic when stored under water for 30 days [0031] and, (b) is composed of carbon fibers that are undamaged (there is no teaching of damaged fibers and in fact Blunk explicitly teaches that the device has a durable effect which is a teaching of not breaking down or damaging [0031]).
Regarding claim 43, Blunk does not teach the product to be brittle.
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.
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.
Claim(s) 35-39, 41, and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Blunk et al, US Patent Publication 2011/0014548.
Regarding claim 35, Blunk further teaches wherein said carbon fibers are undamaged [0031], but is silent on that is determined by imaging said carbon fibers by scanning electron microscopy (SEM).
The manner in which the fibers are determined to be undamaged does not affect if the fibers are undamaged. The act of teaching a highly durable component with a hydrophilic effect remains explicitly taught. It would have been obvious to one of ordinary skill in the art at the time of the invention that using a scanning electron microscope to determine if the fibers are unbroken would verify the teachings of a highly durable product as taught by Blunk.
It is recommended to clarify the claims to be based on the physical structure of the product to differentiate it as it is a product claim. It has been held that an assumption of matching structure is present when all of the actively claimed limitations are taught by the reference even if the reference is silent to a specific property or limitations (see In re Best and In re Swineheart).
Regarding claim 36, Blunk remains as applied above and while does not explicitly teach that the product remains hydrophilic after 60 days, it is taught that it remains hydrophilic after 45 days which an implication that longer would remain the same do to its high durability [0031]. It would have been obvious that the same properties would be present after 60 days as the product it self has not been changed as stated in the rejection of claim 35 above.
Regarding claims 37 and 44, Blunk further teaches that the hydrophilic carbon is attached to hydroxyl groups [0023]. As the same materials are utilized as stated above it is assumed that the requirement for a “high hedge density” is also taught.
Regarding claim 38, Blunk does not teach that the material is brittle.
Regarding claim 39, Blunk further teaches that the carbon material is sonicated prior to being used to form a conductive surface [0029] and that the hydrophilic nature is due to an attached hydrophilic group (see claim 8) and then also teaches that the carbon materials are deposited by use of electrochemical deposition (see claim 10)
Regarding claim 41, Blunk further teaches wherein said carbon fibers are undamaged [0031], but is silent on that is determined by imaging said carbon fibers by scanning electron microscopy (SEM).
The manner in which the fibers are determined to be undamaged does not affect if the fibers are undamaged. The act of teaching a highly durable component with a hydrophilic effect remains explicitly taught. It would have been obvious to one of ordinary skill in the art at the time of the invention that using a scanning electron microscope to determine if the fibers are unbroken would verify the teachings of a highly durable product as taught by Blunk.
It is recommended to clarify the claims to be based on the physical structure of the product to differentiate it as it is a product claim. It has been held that an assumption of matching structure is present when all of the actively claimed limitations are taught by the reference even if the reference is silent to a specific property or limitations (see In re Best and In re Swineheart).
Claim(s) 35-39 and 41- 44 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al, US Patent Publication 2018/0309109 in view of Kuwajima et al, US Patent Publication 2020/0298542.
Regarding claims 34-39 and 41-44, Kim teaches a battery or capacitor (see abstract) that includes a separator coating process of the substrate (which can be a carbon material [0071-0073] that includes the act of treating the carbon fibers [0086] in a surfactant of sodium dodecyl sulfate [0086] and then to confiscate for an hour to provide even distribution [0086]. It is stated that the surface should be hydrophilic [0088] and that if the starting material is hydrophobic then the particles may poorly form [0082]. This is being read as a teaching of treating the surface of a hydrophobic surface so that it achieves a hydrophilic state through inclusion of the nanoparticles with the help of the surfactants [0083].
Kim further teaches that the articles go through electrochemical processes in both the formation and operation of the final product, but is silent on the specific use of electrooxidation.
In the same field of endeavor of forming a component for a capacitor or batter [ 0190], Kuwajima teaches s carbon fiber sheet that goes through a preprocessing and then also includes a surface treatment of electro-oxidation in a liquid phase made up of potassium hydroxide (the preferred electrolyte of the instant application)[0030].
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the specifically stated electro-oxidizing steps as taught by Kuwajima in the Kim reference for ethe benefit of treating a carbon fiber material in a known manner to produce the same predicable end result of an electrochemical device useful in a capacitor with a high degree of strength.
While neither reference teaches if the hydrophilic nature remains after 30 days, both reference are explicit in producing highly durable substrates of a hydrophilic nature. It would be left up to one of ordinary skill in the art at the time of the invention to determine if the value of a substrate with high durability that is made with the same materials (both reference specifically teaches the instant applications preferred materials and solutions in the same manner) with the same intention would produce the same claimed result. It is the Examiner’s stance that the act of utilizing the same materials in the same manner will produce the same end result of being capable of being hydrophobic and unbroken after the 30 days of submersion as claimed. It is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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