UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
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`15/503,768
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`06/05/2017
`
`Naoki YOSHIKAWA
`
`MIYOP0133WOUS
`
`2317
`
`MARK D. SARALINO (PAN)
`RENNER, OTTO, BOISSELLE & SKLAR, LLP
`1621 EUCLID AVENUE
`19TH FLOOR
`CLEVELAND, OH 44115
`
`CREPEAU~ JONATHAN
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`ART UNIT
`1725
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`10/29/2018
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`ipdoeket@rennerotto.eom
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`PTOL-90A (Rev. 04/07)
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`

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`Off/09 A0170” Summary
`
`Application No.
`15/503,768
`Examiner
`JONATHAN CREPEAU
`
`Applicant(s)
`YOSHIKAWA et al.
`Art Unit
`AIA Status
`1725
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1). Responsive to communication(s) filed on 6/5/17.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)D This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
`5)
`Claim(s)
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`1—15 is/are pending in the application.
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`5a) Of the above claim(s)
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`is/are withdrawn from consideration.
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`E] Claim(s)
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`is/are allowed.
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`Claim(s) fl is/are rejected.
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`[:1 Claim(s) _ is/are objected to.
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`) ) ) )
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`6 7
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`8
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`
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`are subject to restriction and/or election requirement
`[j Claim(s)
`9
`* If any claims have been determined aflowabte. you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
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`Application Papers
`10)[:] The specification is objected to by the Examiner.
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`11). The drawing(s) filed on 2/14/17 is/are: a). accepted or b)[:j objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)D Some”
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`C)D None of the:
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`1.[:]
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`Certified copies of the priority documents have been received.
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`2.[:]
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`Certified copies of the priority documents have been received in Application No.
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`3.. Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) C] Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mai| Date 6/5/17 8/8/17 4/5/18 10/2/18_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20181019
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`

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`Application/Control Number: 15/503,768
`Art Unit: 1725
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`Page 2
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`DETAILED CORRESPONDENCE
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`Notice ofPre-AIA 0r AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`Claim Rejections - 35 US C § 102
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`2.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(a)(l) 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.
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`3.
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`Claim(s) 1 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
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`Rebouillat et al (US 20140037915). Regarding claim 1, the reference is directed to an electrode
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`comprising a first diffusion layer (6) having water repellency (i.e., polyethylene, see [0037]), a
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`second diffusion layer (8) supporting a catalyst thereon, and an oxygen permeable layer (4)
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`interposed between the first and second layers ([0004], [0036] and [0055], Fig. 2). The second
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`layer includes a sheet like carbon material (graphite, see [0039]). Regarding claim 8, the catalyst
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`is an oxygen reduction catalyst. Thus, the instant claims are anticipated.
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`

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`Application/Control Number: 15/503,768
`Art Unit: 1725
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`Page 3
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`Claim Rejections - 35 US C § 103
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`4.
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`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.
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`5.
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`Claims 2—5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rebouillat et
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`al in view of Kuwata et al (US 20140127606).
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`Rebouillat et al is applied to claim 1 for the reasons stated above. However, the reference
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`does not expressly teach that graphene layers in the graphite are arranged in a direction
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`perpendicular to a stacking direction of the layers, as recited in claim 2.
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`Kuwata et al is directed to a microporous layer sheet for a fuel cell electrode. In Figures
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`3—6, the reference teaches that scale—like graphite (Gf) flakes are oriented in a state of being
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`parallel to each other, and perpendicular to the stacking direction.
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`Therefore, the invention as a whole would have been obvious to one skilled in the art at
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`the time of filing because the artisan would be motivated to use the scaly graphite of Kuwata et
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`al in the second layer of Rebouillat et al. In the abstract, Kuwata et al. teach that the layer sheet
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`of the invention can ensure gas permeability and drainage performance without lowering
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`strength. Accordingly, the artisan would be motivated to use the scaly graphite of Kuwata et al
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`in the second layer of Rebouillat et al. As such, the limitation that graphene layers in the
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`graphite are arranged in a direction perpendicular to a stacking direction of the layers would be
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`rendered obvious.
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`

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`Application/Control Number: 15/503,768
`Art Unit: 1725
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`Page 4
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`Regarding claim 3, the microporous layer is disclosed as being gas permeable by Kuwata;
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`therefore, the artisan would be motivated to employ a layer having an ISO air permeance having
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`an appropriate value. Thus, the claimed range would be rendered obvious.
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`Regarding claim 4, it would be obvious to use a layer having a relatively low density in
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`order to ensure the gas permeability. As such, the claimed range would be rendered obvious.
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`Regarding claim 5, it is noted that Kuwata teaches that “the scale—like graphite
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`contributes to resistance of the MPL in the plane direction, that is, electrical conductivity
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`enhancement thereof in the plane direction” ([003 5]). Accordingly, it would be within the skill
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`of the art to employ an electrode having a low in—plane resistivity, wherein the resistivity in the
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`thickness direction would be higher (i.e., 100x as claimed). Therefore, claim 5 would be
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`rendered obvious.
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`6.
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`Claim 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rebouillat et al in
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`view of JP 2007—290936.
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`Rebouillat et al is applied to claim 1 for the reasons stated above. However, the reference
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`does not expressly teach that the catalyst is supported between graphene layers in the graphite, as
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`recited in claim 6.
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`JP ‘936 is directed to a graphite layer that can be used in a fuel cell electrode. In [0022]
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`it is taught that a metal chloride is intercalated into the graphite (that is, between the graphene
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`layers), and then reduced to form a metal catalyst.
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`Therefore, the invention as a whole would have been obvious to one skilled in the art at
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`the time of filing because the artisan would be motivated to use the catalyst and graphite
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`

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`Application/Control Number: 15/503,768
`Art Unit: 1725
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`Page 5
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`structure of JP ‘936 in the second layer of Rebouillat et al. In [0022], JP ‘936 teaches that
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`“catalyst deterioration due to agglomeration of platinum particles is suppressed as much as
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`possible. As a result, reduction in reaction efficiency during power generation is prevented,
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`battery life is prolonged, and the effect of reducing the amount of platinum used is excellent.”
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`Accordingly, the artisan would be motivated to use the catalyst and graphite structure of JP ‘936
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`in the second layer of Rebouillat et al.
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`7.
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`Claim 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rebouillat et al in
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`view of Schechter et al (US 20110229742).
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`Rebouillat et al is applied to claim 1 for the reasons stated above. However, the reference
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`does not expressly teach that the oxygen permeable layer comprises silicone, as recited in claim
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`7.
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`Schechter et al is directed to a microbial fuel cell. In [0057], it is disclosed that an
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`oxygen permeable layer 140 in a cathode is preferably formed of silicone rubber.
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`Therefore, the invention as a whole would have been obvious to one skilled in the art at
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`the time of filing because all the claimed elements were known in the prior art and one skilled in
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`the art could have combined the elements as claimed by known methods with no change in their
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`respective functions and the combination would have yielded predictable results to one of
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`ordinary skill in the art at the time of the invention. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct.
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`1727 (2007). As such, the use of silicone in Rebouillat et al would have been obvious.
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`

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`Application/Control Number: 15/503,768
`Art Unit: 1725
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`Page 6
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`8.
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`Claims 9—12, 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over
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`Rebouillat et al in view of JP 2009-295488.
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`Rebouillat et al is applied to claim 1 for the reasons stated above. In addition, regarding
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`claim 9, the reference teaches a microbial fuel cell having an anode supporting microorganisms.
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`Regarding claims 10—11, the fuel cell employs a liquid containing organic matter in contact with
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`the second (catalyst) side, and the first side is exposed to air. Regarding claim 15, the fuel cell
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`can also be considered to be a “water treatment device.”
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`However, the reference does not expressly teach that the fuel cell has an ion transfer layer
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`permeable to hydrogen ions or the structure thereof (claims 9 and 14), or that the anode
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`comprises an electrically conductive porous sheet (claim 12).
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`JP ‘488 is directed to a microbial fuel cell using an air cathode. In [0075] and [0076], the
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`reference teaches that an ion—permeable and non—conductive film (porous or woven sheet) may
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`be used between the anode and cathode, and that the anode may be a porous body formed of an
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`electrically conductive material.
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`Therefore, the invention as a whole would have been obvious to one skilled in the art at
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`the time of filing because all the claimed elements were known in the prior art and one skilled in
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`the art could have combined the elements as claimed by known methods with no change in their
`
`respective functions and the combination would have yielded predictable results to one of
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`ordinary skill in the art at the time of the invention. KSR v. Teleflex, 82 USPQ2d 1385, 127 S. Ct.
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`1727 (2007). As such, the use of an ion transfer layer as a separating layer and an electrically
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`conductive porous anode sheet in Rebouillat et al would have been obvious.
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`

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`Application/Control Number: 15/503,768
`Art Unit: 1725
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`Page 7
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`9.
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`Claim 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rebouillat et al
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`in view of JP ‘488 as applied to claim 9 above, and further in view of Kuwata et al.
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`Modified Rebouillat et al does not expressly teach that graphene layers in the graphite are
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`arranged in a direction perpendicular to a stacking direction of the layers, as recited in claim 13.
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`Kuwata et al is directed to a microporous layer sheet for a fuel cell electrode. In Figures
`
`3—6, the reference teaches that scale—like graphite (Gf) flakes are oriented in a state of being
`
`parallel to each other, perpendicular to the stacking direction.
`
`Therefore, the invention as a whole would have been obvious to one skilled in the art at
`
`the time of filing because the artisan would be motivated to use the scaly graphite of Kuwata et
`
`al in the second layer of Rebouillat et al. In the abstract, Kuwata et al. teach that the layer sheet
`
`of the invention can ensure gas permeability and drainage performance without lowering
`
`strength. Accordingly, the artisan would be motivated to use the scaly graphite of Kuwata et al
`
`in the second layer of Rebouillat et al. As such, the limitation that graphene layers in the
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`graphite are arranged in a direction perpendicular to a stacking direction of the layers would be
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`rendered obvious.
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`Conclusion
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`10.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272—1299.
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`The examiner can normally be reached Monday—Friday from 9:30 AM — 6:00 PM EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Basia Ridley, can be reached at (571) 272—1453. The phone number for the
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`